Wednesday, October 02, 2013

Precedential No. 39: TTAB Sustains Swatch Opposition to IWATCH, Finding Lack of Bona Fide Intent

The Board sustained an opposition to registration of the mark IWATCH, in standard character form, for watches, clocks, and parts thereof, finding that applicant lacked the requisite bona fide intent to use the mark in commerce in connection with its identified goods. Based on the record evidence, the Board concluded that applicant filed the application merely in order to reserve a right in the mark in case it developed a product at some future time. The Board, however, dismissed opposer's Section 2(d) claim based on its famous mark SWATCH for identical goods, ruling that the marks were so different as to make confusion unlikely. Swatch AG v. M.Z. Berger & Co., 108 USPQ2d 1463 (TTAB 2013) [precedential].

Likelihood of confusion: Despite the overlap in goods, the presumed identity of channels of trade and classes of consumers, and the fame of opposer's SWATCH mark, the Board found the first duPont to be dispositive because the involved marks differ significantly in sound, meaning, and overall commercial impression.

Lack of Bona Fide Intent: Applicant provided some documentary evidence relating to its alleged bona fide intent to use the IWATCH mark, but all of the documents related to its application to register: a trademark search report; an internal email reporting a conversation with the Examining Attorney; and three internal emails forwarding pictures or renderings of watches and a clock featuring the IWATCH mark, created eight months after the application was filed and submitted to the PTO as samples of promotional materials. However, they were apparently never used for any promotional or other purposes, and applicant's witnesses disagreed as to what the pictures represented:: mockups or renderings.

Although a trademark search report may be probative on the issue of bona fide intent, under the totality of circumstances, these documents did not establish a bona fide intent on the part of applicant as of the filing date.

The remaining evidence comprised the testimony of applicant's witnesses. There was probative evidence that applicant did not intend to use the mark on any clocks, nor on any subsidiary goods. As to watches, the issue was closer. There was testimony that applicant held internal brainstorming sessions regarding what it might do with the mark, and there was contradictory testimony regarding a discussion with a buyer, but in any case nothing further developed.

The evidence showed that "applicant's idea was to use the IWATCH mark only in association with a 'smart watch.'" But it had never previously offered a watch incorporating such technological features, and it made no plans for developing or sourcing such a watch at any time before or within fifteen months after filing its application.

The Board took into consideration the fact that applicant has been in the watch and clock business for decades, which circumstance may weigh against a finding of lack of bona fide intent. However, that evidence was outweighed by (1) applicant's testimony that it did not intent to use the mark for clocks when the application was filed, (2) testimony indicating a lack of intent to use the mark on the subsidiary goods, and (3) contradictory testimony regarding its efforts to develop and market an IWATCH-brand watch.

The Board concluded that, at the time it filed the subject application to register, applicant's intent was "merely to reserve a right in a mark" in case it later decided to develop an associated product, rather than to use the mark in commerce on the identified goods. The intent to reserve rights in a mark does not equate to a bona fide intent to use the mark, and therefore the Board sustained the opposition.

Read comments and post your comment here.

TTABlog note: The facts here were not quite as bad as those in the MITHRIL case, The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, 95 USPQ2d 1723 (TTAB 2010) [precedential], but they were bad enough. TTABlog discussion here.

Text Copyright John L. Welch 2013.


At 3:20 PM, Anonymous Anonymous said...

So if are looking for a mark, you do a search that appears clean, you file an application while you work on possible concepts, the goods/services are broad, but all fall within your current line of business, what more do you need to show intent? Clearly, you intended to use it, but only after you made sure it got approved first. There are obviously many filings that are made with an intent to use the mark once it gets approved, but the trademark approval process may be one of the first parts of that process. Since it can take so long you get it underway as early as possible, but you are not going to risk getting sued for using the mark until and unless it is approved. Here they put their plans on hold pending the Opposition.

This case seems wrong. These guys had intent in my opinion. They even had some documentary evidence, which in many situations I assume would be lacking entirely.
Is this going to be the new way to easily oppose ITU applications?
Do we now need to be more concerned about filing broad lists of goods/services?


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