Friday, July 09, 2010

Precedential No. 28: Finding Lack of Bona Fide Intent, TTAB Sustains "MITHRIL" Opposition

In this, the third episode in the Registration Quest of Joseph M. Bumb, the Board sustained an opposition to registration of the mark MITHRIL for various jewelry items, finding that Mr. Bumb "lacked the requisite bona fide intention to use the MITHRIL mark in commerce when he filed his intent-to-use application to register that mark." The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, 95 USPQ2d 1723 (TTAB 2010) [precedential].

On May 18th, the Board non-precedentially sustained Opposer's opposition to 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. [TTABlogged here].

Here, there was no dispute that "mithril" is the name of a mythical precious metal that figures prominently in J.R.R. Tolkien's works. Opposer had standing to oppose because it licensed us of the mark MITHRIL MINIATURES for collectible figurines.

Bumb admitted that, other than his I-T-U application and documents pertaining to his registration of several domain names, he had no documentation "relating to his adoption of or intent to use the MITHRIL mark in commerce." Moreover, Bumb's trial testimony (taken by Opposer) established that "he adopted the MITHRIL mark because of its significance in the Tolkien works" and that his intention as of the filing date was "at most, merely to reserve a right in the term MITHRIL by registering the domain names and filing a trademark application, without the requisite bona fide intent to actually use the mark in commerce."

Q. And did you have any plans for a particular product line?
A. No, not specifically. I mean just the opportunity to create something in the future.

Q. I guess what I’m trying to understand is whether you were going to make a line of jewelry and call it Mithril or LOTR or whether there were going to be two separate lines of jewelry.
A. I had no intent either way.
Q. Okay.
A. At this point I was just applying for the trademark or first the domain and then cover the trademark in lieu of something growing. No intent.

The lack of documentation, coupled with Bumb's testimony, sufficed to establish Opposer's prima facie case of lack of bona fide intent.

It was then Bumb's burden to overcome that prima facie case, but he presented no testimony or other evidence at trial. Bumb's subjective assertions regarding his intent "do not constitute objective evidence of such intent which would rebut opposer's prima facie case."

The burden then shifted to Bumb to rebut Opposer's evidence by showing that he indeed did have the requisite intent, but Bumb presented neither testimony nor evidence at trial.

In his brief, Bumb asserted that a cease-and-desist letter from Opposer caused him to cease development of the MITHRIL line. However, he did not produce a copy of the letter. Opposer acknowledged that it sent a letter, but not until after the subject application was filed. Therefore, the Board reasoned, the letter "does not help to establish that applicant had a bona fide intent to use the mark when he filed the application."

And so the Board sustained the opposition under Section 1(b) on the ground of lack of bona fide intent, and it concluded that the application is void ab initio.

TTABlog comment: Why was this decision deemed precedential, while the MIDDLE EARTH JEWELRY and ARAGORN decision was not?

Text Copyright John L. Welch 2010.


At 12:18 PM, Blogger Owen said...

I am continually shocked and amazed at how many people are willing to waste filing fees on fool's errands before the USPTO.


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