Friday, October 04, 2013

Precedential No. 40: TTAB Sustains Opposition to CLOROTEC & Design Due to Non-Use

The Board granted Clorox's motion for summary judgment in this opposition to registration of the mark CLOROTEC & Design for "electronic equipment, namely, electrolysis cell for use in the manufacture of various ionic solutions," finding that applicant did not make a bona fide use of the mark in commerce on the identified goods prior to the filing of his use-based application. The subject application therefore was declared void ab initio and judgment was entered in favor of Clorox. The Clorox Company v. Hermilo Tamez Salazar, 108 USPQ2d 1063 (TTAB 2013) [precedential].

Applicant Salazar admitted in his interrogatory answers, and in a declaration filed with the Board, that he had not used the subject mark on any product sold in the United States and had not shipped any product into the United States. However, he pointed to his advertisement and offer for sale of the subject goods on the English-language version of his website, and further asserted that machinery parts (presumably to make the goods) have been shipped since May 2011 (eleven months after his filing date) from his manufacturer in Utah to applicant in Mexico through one his licensees in Texas.

The Board concluded that because Salazar did not sell or transport his identified goods bearing the subject mark in the United States, he had not made bona fide use of his mark in commerce as of the filing date of his use-based application.

Salazar contended that it would be inequitable and inconsistent with Congressional intent to require a sale of his product when he sells fewer than one per year, on average, at prices ranging from two hundred thousand dollars to two million dollars or more, or to require transportation of a one-ton piece of machinery that is custom made. The Board, however, observed that Salazar's position conflicts with the clear and plain statutory definition of "use in commerce," and further that Salazar failed to cite any supporting authority for his theory. 

Salazar's use of the subject mark on his website was mere advertising use and did not constitute use of the mark in commerce within the meaning of the Trademark Act. And the shipment of parts from Utah to Mexico subsequent to the filing of the application was of no relevance. Moreover, the Board observed (in blatant dictum), that even assuming arguendo that this shipment occurred before the filing date, no actual finished products were shipped, and even if finished products (or all necessary parts) had been shipped, such shipment from a manufacturer to the owner of the mark is merely a delivery of goods to the trademark owner in preparation for offering the goods for sale, and is not a bona fide use of the mark in commerce.

The Board therefore granted the summary judgment motion, sustained the opposition, and refused registration to Salazar.

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Text Copyright John L. Welch 2013.

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