Tuesday, December 14, 2010

Precedential No. 46: Applicant Lacked Bona Fide Intent, TTAB Sustains "AQUAJETT" Opposition

Finding that Applicant lacked a bona fide intent to use its mark in commerce, the Board sustained an opposition to registration of AQUAJETT for "dental instruments, namely, oral irrigators." Applicant had no documentation to demonstrate the requisite bona fide intent, and neither its filing of a trademark application nor its "mere statement" that it intended to use the mark was probative evidence. SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 USPQ2d 1300 (TTAB 2010), redesignated as precedential (December 10, 2010).

The Board drilled into the evidentiary record, finding major cavities: Applicant had "no plans relating to manufacture, licensing, marketing or use of the mark." The record was "devoid of any evidence such as manufacturing efforts, licensing efforts, test marketing, correspondence with prospective licensees, preparation of marketing plans or business plans, creation of labels, marketing or promotional materials, and the like."

Applicant tried to fill the holes in its evidence by pointing to two patents for dental irrigators owned by its principal, Dr. William Weissman, but those documents do not demonstrate an intent to use the subject mark for the patented goods. Moreover, vague references to business plans and research and development, contained in the minutes of Applicant's annual meeting, were not enough.

Of course, the mere filing of an ITU application does not prove a bona fide intent (or else lack of bona fide intent would never be a ground for opposition or cancellation), nor does the mere statement that an Applicant has such an intent.

In short, Applicant failed to overcome "Opposer's showing that applicant lacked the requisite bona fide intent:"

The absence of documentation coupled with applicant's failure to take testimony or offer any evidence supporting its bona fide intent to use the AQUAJETT mark in connection with the identified goods convince us that applicant did not possess a bona fide intent to use the mark.

Applicant lastly contended that Opposer must show that Applicant acted in bad faith, and that Opposer's claim is in the nature of an accusation of fraud "that has neither been sufficiently pled nor proven by clear and convincing evidence." The Board, however, disagreed. No showing of bad faith is required to prove a lack of bona fide intent.

Text Copyright John L. Welch 2010.


At 10:39 AM, Anonymous Elizabeth King said...

With respect to this: "Of course, the mere filing of an ITU application does not prove a bona fide intent (or else lack of bona fide intent would never be a ground for opposition or cancellation)" I agree. But should it not at least be enough to survive a summary judgment motion? I think you can compare and contrast this with the fraud analysis and potential outcomes: If an entire class can be removed by proving a fraudulent signing of the bona fide intent Declaration, then why isn’t an honest signing of the Declaration coupled with sworn testimony that the applicant does have a bona fide intent to use the mark sufficient to establish “intent” for purposes of surviving a summary judgment challenge over bona fide intent to use? Either the signing of the Declaration means something or it doesn't.


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