Thursday, July 11, 2013

TTAB Grants Two Summary Judgment Motions Due To Lack of Bona Fide Intent

In a pair of decisions issued the same day, the Board granted two motions for summary judgment on the ground of lack of bona fide intent. In the first, the applicant sought to register his mark for "retail grocery stores," but his intent was to sell his products for purchase by grocery stores. In the second, the applicant had no business plan or other documentary support for his alleged bona fide intent.

Pacific Poultry Company, Limited v. George D. Stirling, Jr., Opposition No. 91204620 (June 12, 2013) [not precedential]. Stirling applied to register the mark SWEET G'S HULI CHICKEN MARINADE, SAUCE, GLAZE for "retail grocery stores." He admitted that he had no intention to operate any retail stores, but instead intends "to sell his products to retail grocery stores for the distribution of his products at retail." In short, he claimed that the sale to stores is "in fact, a 'retail grocery store service.'"

The Board sided with opposer, observing that "a service must be performed primarily for the benefit of others, and promoting the sale of one's own goods is not a service." Applicant's potential sale of sauces to grocery stores "is promoting the sale of his own goods. It is not a registrable services, and not a grocery store service." And so the Board entered judgment summarily, declining to reach the Section 2(d) claim.

Diageo North America, Inc. v. Captain Russell Corp., Opposition No. 92103745 (June 12, 2013) [not precedential]. This applicant sought to register CAPTAIN RUSSELL CUBA LIBRE for rum and cola mixes, but Captain Morgan stood in the way. After discovery closed, the Board granted opposer's motion to add the ground of lack of bona fide intent.

Applicant admitted that it did not have a business plan or a budget, and it had no market research, recipe development, or discussions with advertising or design agencies. It had no potential advertising or plans to advertise, and had not partnered with any investors. It stated that it did not have money to produce the product. In short, there was no objective evidence to support its alleged bona fide intent. This absence of documentary evidence established a prima facie case of lack of bona fide intent. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993).

Applicant testified that it is a start-up company "with limited resources but great idea for product." In order to attract investors, "it is imperative to those investors to know that CAPTAIN RUSSELL CUBA LIBRE trademark is granted to the Applicant."

The Board concluced that applicant did not come forth with evidence to adequately explain its lack of documentation or otherwise rebut opposer's prima facie case. Therefore it granted the summary judgment motion.

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Text Copyright John L. Welch 2013.


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