This recent precedential decision by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) cautions applicants to be in a position to show documentary proof contemporaneous with the trademark filing date that there was a bona fide intent for use of the proposed mark. See A&H Sportswear Co., Inc. v. William W. Yedor, 2019 USPQ2d 111513 (TTAB 2019) [precedential]. See our firm page entitled, How Does An Applicant Prove A Bona Fide Intent To Use A Trademark, for more information on this topic. The applicant was seeking to register MIRACLE ON 35TH STREET in standard characters for printed matter, photographs, posters, etc. and clothing. The matter comes to the TTAB from a Notice of Opposition filed by A&H Sportswear Co., (“Opposer”) Inc. on the grounds of priority and likelihood of confusion and dilution by blurring. Opposer pleaded 15 registrations for the mark MIRACLE for various apparel. Opposer simultaneously filed for summary judgment and to amend its pleadings to add a claim for no bona fide intent to use the mark in commerce.
Under Section 528.07(a) of Trademark Trial and Appeal Board Procedure (“TBMP”), a party can seek summary judgment on an unpleaded claim if they simultaneously move to amend the pleadings to include that claim. The TTAB liberally grants leave to amend pleadings if justice so requires it, unless the amendment to the pleadings would violate case law or prejudice one of the parties. Six weeks after receiving the last of the written discovery, opposer moved to amend the pleadings. Applicant did not produce any evidence that the delay would prejudice his rights, likely because the documents needed to defend the claim were in the applicant’s possession. Leave to amend the pleadings was granted.
To show that a party has a bona fide intent to use the mark in commerce, there has to be an objective determination based on a totality of the circumstances. The absence of documentary evidence regarding an applicant’s bona fide intent to use the trademark in commerce establishes a prima facie case that the applicant lacks the intention required under trademark law. The applicant produced one image of a prototype of a T-shirt as a response to a request for production of documents. The applicant couldn’t identify documents that showed use of the mark on the goods in commerce. The applicant couldn’t identify any retail shops, distributors, or resellers that would offer the goods with the trademark; nor could he produce a business or marketing plan associated with the branded apparel or other printed goods. Lastly, there was no evidence of any websites that displayed the goods or intended to display or sell the goods in the future.
The Board commented that in every industry there are certain steps that will lead to bringing the goods to the marketplace. The activities or steps typical or commonplace for that industry must be considered. In the fashion industry, one would expect to see documents in connection with manufacturing, marketing, licensing, labeling, building a website etc. The Board does not maintain a specific requirement as to when the activities must occur in relation to when the filing occurs.
In fact, case law has split as to what is sufficiently contemporaneous. See Swatch AG v. M.Z. Berger & Co., 108 USPQ2d 1463 (TTAB 2013) [precedential], where it was held that in view of the totality of the circumstances, internal emails occurring eights months after the trademark filing was not enough; See also, Lane LTD v. Jackson International Trading Co., 33 USPQ2d 1351 (TTAB 1994), where the Board determined that documents that occurred nine to eleven months after the filing of the application were acceptable to show a bona fide intent. If the Board finds that an applicant’s intent was merely to reserve the mark for later use because the applicant had a purely speculative plan, as it did with the applicant in A&H Sportswear Co., Inc. v. William W. Yedor, supra, the application will be void ab initio, and registration will be refused. If you have questions pertaining to your intent-to-use application, please contact the firm for a courtesy consultation.