Finding Lack of Bona Fide Intent, TTAB Sustains "MIDDLE EARTH JEWELRY" Oppositions
Pro se Applicant Joseph M. Bumb got the TTABum's rush in his quest for registration of the marks MIDDLE EARTH JEWELRY and ARAGORN for various jewelry items. In light of Bumb's lack of documentation and his own testimony, the Board found the applications to be void ab initio due to Bumb's lack of bona fide intent to use the marks. The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91170589 (May 18, 2010) [not precedential].
A 2008 Harris poll named Lord of the Rings as the third most popular book of all time. [Can you name the other two? - ed.] Opposer is a film production company that owns "the exclusive world-wide performance, motion picture and ancillary rights in and to the Tolkien works." It has licensed its Tolkien-related marks for many goods (including jewelry), and the films based on the series are the most successful movies in U.S. box office history.
Applicant Bumb "operates a store at the San Jose Flea Market in California, where he buys and sells a range of products including jewelry, collectibles and memorabilia. He also engages in the custom design and manufacture of jewelry."
Bumb admitted that he has no documentation relating to his intent to use the MIDDLE EARTH JEWELRY or ARAGORN marks. That statement alone established a prima facie case of lack of bona fide intent, and shifted the burden of production to Bumb. He submitted no evidence at trial on the issue, but in his trial testimony (taken by opposer) he testified that he couldn't recall whether he had an intent to manufacture or sell jewelry under these marks. "The only thing I did was trademark the name." [sic!]
Indeed, applicant’s testimony includes what essentially are his admissions that he filed his intent-to-use application merely to reserve a right in the MIDDLE EARTH JEWELRY mark “as an insulator or a buffer."
The same testimony and reasoning applied to the ARAGORN mark.
And so the Board found the applications void ab initio for lack of a bona fide intent to use the marks.
TTABlog comment: Opposer had to spend a lot of time and money to block these applications. It seems there should be a faster way to resolve cases like this. Unfortunately, in my experience, a summary judgment motion seldom does the trick because the Board seldom grants summary judgment. Let's face it, it's a lot easier to deny a summary judgment than to write a decision justifying the granting of one.
Text Copyright John L. Welch 2010.