Monday, August 24, 2009

On Summary Judgment, TTAB Finds "SUPER HERO" Applicant Lacked Bona Fide Intent

The Board entered summary judgment against pro se Applicant Michael Craig Silver in his attempt to register the mark SUPER HERO for various skin care products. Based on Silver's discovery responses and discovery deposition testimony, Opposers established a prima facie case that Applicant lacked a bona fide intent to use the mark on the goods at the time he filed his application. Silver failed to come forward with sufficient evidence to rebut Opposer's case. DC Comics and Marvel Characters, Inc. v. Michael Craig Silver, Opposition No. 91176744 (August 21, 2009) [not precedential].

Standing: Opposers established their standing via two declarations asserting (rather vaguely) that Opposers license their marks, including SUPER HERO and SUPER HEROES, in connection with various products and services, including cosmetics and toiletries. That was enough to clear the minimal hurdle posed by the standing requirement.

Bona fide Intent: Silver stated on deposition that he had not formed a business at the time he filed his application; had no experience in marketing or manufacturing these goods; was unaware of any FDA regulations regarding same; and had no specific education that would equip him to develop such products. Moreover, he had not engaged a chemical engineer or a marketing firm since the filing.

Silver did not produce any documents in response to Opposers' numerous document requests seeking marketing and advertising materials, sales documents, and market studies. In fact, he stated that he "has no documents concerning any effort to exploit or commercialize any product under SUPER HERO."

The Board therefore found that Opposers had met their initial burden to establish that there existed no genuine issue of material fact regarding Silver's lack of a bona fide intent.

Silver provided four documents with his brief in opposition to the motion: three were undated and the fourth concerned the mark TEXASTEA. He did not submit a declaration or affidavit. Even though these four documents were not produced during discovery, the Board considered them anyway out of "an abundance of caution," but it found them to have little impact:

... applicant's evidence indicates, at most, that applicant has considered use of the involved mark for the identified goods and has confidence in his ability to bring such goods to market at some point in the future; however, these documents do not rebut opposers' showing that there is no genuine issue of material fact that applicant did not possess the requisite intent to use the mark on the identified goods when he filed his application.

Moreover, Silver's argument in his brief that he had the ability to bring the goods to market were directly contradicted by his deposition testimony, stating that he had no experience or training in the relevant field.

The Board therefore ruled in favor of Opposer and sustained the opposition.

TTABlog comment: I'm going out on a limb by predicting that this bona fide intent issue is going to be the next big thing in TTAB jurisprudence. I said as much in my post on the Honda v. Winkelmann case (here).

Text Copyright John L. Welch 2009.


At 9:00 AM, Anonymous Paul Reidl said...

John, I have worried about this issue for some time and I agree that it could be the next big TTAB issue. My concern is that the Lanham Act gives no guidance on where to draw the line, i.e., exactly what is required to meet the bona fide element? And when? If the bar is set high (i.e. requiring lots of preparation work prior to filing) that could injure a lot of small companies who do not do that even on a good day. If the bar is set low (i.e. the CEO of a small company has the idea, has the mark cleared and files the application before any work is actually begun), then the test could become much ado about nothing.


At 1:58 PM, Blogger Pamela Chestek said...

I'm curious about standing, too - is the bar going to get higher? Why did DC Comics need to allege that it licensed its mark for similar goods? Shouldn't ownership of a mark (registered or common law) that's sorta similar be sufficient? Is the standing requirement morphing into a first cut at likelihood of confusion?

At 3:26 PM, Blogger Dan said...

I've wished somebody would make a serious challenge of the Marvel/DC trademark on "superhero" since I first heard of it about 30 years ago; it seems totally bogus to me that anybody could have proprietary rights to the name of a genre which has been used generically for decades (starting well before it was trademarked). They should just as soon let McDonald's and Burger King jointly trademark "hamburger". Unfortunately, this particular case was dealt with on grounds that didn't address the legitimacy or lack of same of the original trademark.

At 5:22 PM, Anonymous Doug said...

As evidence of intent, I would have produced the $375 check to the PTO. As a percentage of the typical pro se applicant's income, that would likely exceed a Fortune 500 company's entire annual product development budget. If he did not spend that money with the intent to develop a product, what did he intend? Any alternate theories? Wasn't the purpose of this section merely to prevent trademark warehousing - which large companies do with abandon by fling multiple ITU applications for one potential product.
Next up - token business plans (back to square one).

At 7:24 PM, Anonymous paul reidl said...

Doug's comment nails it, in a sense. If writing the check to the USPTO is all that is required, then the standard is meaningless. If the standard is "he's a small guy so he must have BFI" vs. "he's a big guy so he needs more than a stupid little check", then the standard is unfair; a double standard.


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