TTAB Signaling Scrutiny of Bona Fide Intent

more+
less-

On June 12, 2013, the Trademark Trial and Appeal Board (TTAB) granted two motions for summary judgment based on lack of Applicant’s bona fide intent.

In the first of these decisions, Pacific Poultry Company, Limited v. George D. Stirling, Jr., Opposition No. 91204620 (June 12, 2013) [non-precedential], the Applicant, George D. Stirling, Jr., applied to protect SWEET G’S HULI MARINADE, SAUCE, GLAZE for “retail grocery stores”. Opposer, Pacific Poultry Company, claimed priority, likelihood of confusion, and lack of bona fide intent to use the mark in commerce “as a service mark for retail grocery stores”. The record reflected that Applicant’s intent was not to operate a retail grocery store. Instead, the mark was to be used with a food product. Applicant asserted that his product:

“is intended for use not only as a marinate [sic] but as an injectable solution to enhance the flavor of not only poultry but other meats,… [and] is further intended for use as a topping for all consumable food products…”

Moreover, Applicant also indicated that:

“[a]pplicant presumes that the attorney that filed the application meant that applicant would be selling his sauces to ‘retail grocery stores’. Applicant does not now nor does he plan on operating a retail grocery store.”

Applicant argued that while he does not intend to operate a retail grocery store, he does intend to “sell his products to retail grocery stores for the distribution of his products at retail” and that the sale of his products to retail grocery stores is, in fact a “retail grocery store service”. Not surprisingly, the TTAB rejected Applicant’s position citing well-settled precedent that “promoting the sale and use of one’s own goods is not a registrable service.” Finding no genuine dispute of material fact that the applicant lacked the bona fide intent to use his mark for retail grocery store services, the TTAB granted the Opposer’s motion for summary judgment.

In the second decision, Diageo North America, Inc. v. Captain Russell Corp. (Opposition No. 91203745) (June 12, 2013) [non-precedential], the Applicant, Captain Russell Corp., applied to register the mark CAPTAIN RUSSELL CUBA LIBRE for “alcoholic cocktail mixes, namely rum and cola mixes”. Opposer Diageo North America raised various grounds in the Opposition, including one in an amended pleading that Applicant lacked bona fide intent to use the mark as of the filing date. Concurrently with filing the amended pleading, the Opposer moved for summary judgment.

Opposer asserted that Applicant conceded that it did not plan to use the mark and that it did not produce documentary evidence of its intent to use the mark (for example, no “business plan, budget, market research, focus group testing, recipe development, discussions with advertising agencies, marketing plan, permits, legal analysis, capital, or manufacturing or distribution capability.”) Opposer also asserted that Applicant admitted in its discovery responses that it lacked  the skill, experience, or financing necessary to manufacture and bring to market an alcoholic beverage. Applicant argued that it was not required to have a written business plan or any of the other items noted by Opposer. Of particular note, the TTAB quoted Applicant’s response to interrogatories on the issue that of whether Applicant planned to use the mark:

“(p)lease note that entrepreneurs do not plan- they usually react to opportunities at the market place and try to take advantage of those opportunities. As such I do not plan to use (sic) Mark, but rather see opportunity that others do not see or refuse to see and use (sic) trademark as a tool that helps me take advantage of perceived opportunity…”

After considering all the evidence, the TTAB concluded that there was  no documentary evidence of Applicant’s bona fide intent to use the mark CAPTAIN RUSSELL CUBA LIBRE in commerce to identify its goods, and therefore, no genuine dispute of material fact. The TTAB granted Opposer’s Motion for Summary Judgment on this basis.

In U.S. practice, it is unusual to see an applicant’s bona fide intent challenged, and even more unusual to see two opinions decided in the same day which hinge upon this issue. These decisions seem to signal that the TTAB may continue to be more receptive to claims based on lack of bona fide intent, and suggests that Applicants should 1) make sure their identifications of goods and services are described accurately in accordance with their intent, and 2) consider before filing how they will prove intent if called upon to do so.

First published in the INTA Bulletin on October 15, 2013.