Tuesday, November 05, 2013

Polo Runs Roughshod over Pro Se Applicant with No Bona Fide Intent

The Board granted Opposer PRL's motion for summary judgment in this opposition proceeding, ruling that pro se applicant Richard C. Young lacked a bona fide intent to use the mark shown below, for "shirts" [IRISH, POLO CLUB, and USA disclaimed]. Mr. Young had no documentation to support his alleged intent to use the mark, and his discovery responses indicated that he had no concrete plans to do so. PRL USA Holdings, Inc. v. Rich C. Young, Opposition No. 91206846 (October 16, 2013) [not precedential].

PRL established its standing by pleading ownership of 49 registrations for marks that included the word POLO and/or a depiction of a polo player. Its notice of opposition claimed likelihood of confusion and dilution. After receiving applicant's discovery responses, PRL successfully moved to amend its notice of opposition to add the lack-of-bona-fide-intent claim.

As to the summary judgment motion, applicant Young had stated in response to PRL's interrogatories regarding products, revenues, and market research, that he was in an "intention to use status" and did not have "any business planning yet." In response to PRL'S document requests, Young indicated that no documents existed and that he did not "have business activities yet."

The Board noted that Young "has no documentary evidence of business plans, marketing or promotional activities, nor any discussions with manufacturers or licensees." There was no evidence that Young has any current business at all. In short he failed to provide any objective evidence of  a bona fide intent to use the applied-for mark.

The Board has "repeatedly found a lack of bona fide intent to use a mark by individuals who lack the demonstrated capacity to produce the goods identified in the application." Swatch AG v. M.Z. Berger & Co., Opposition No. 91187092 (September 30, 2013). TTABlogged here.

The Board concluded that Young's intent at the time of filing was "merely to reserve a right in the mark" in case it was later approved for publication, and that he would "only at some unspecified future time begin developing a business."

Because there is no documentary evidence of applicant’s bona fide intent to use applicant’s mark in commerce to identify his goods at the time he filed his application, and applicant has not come forth with any evidence to explain his lack of documentary evidence, the Board cannot conclude that applicant had a bona fide intent to use his mark at the time of filing the application.

The Board therefore granted the motion for summary judgment and sustained the opposition.

Read comments and post your comment here.

TTABlog note: Too bad there isn't be some easier way to get rid of these bogus ITU applications. How about asking for Board participation in the discovery/settlement conference and having the interlocutory attorney probe the ITU issue? I'm beginning to think that a conference should be required at the commencement of every case, to try to weed out the hopeless causes (e.g., fraud claims).

Text Copyright John L. Welch 2013.


At 10:34 AM, Anonymous Anonymous said...

How about a similar conference to weed out trademark bullies as well.

Also, how the heck did this Polo mark get past the examination stage in the first place?

At 3:52 PM, Anonymous Scott Smith said...

Re: "Too bad there isn't be some easier way to get rid of these bogus ITU applications."

Sounds like more attorney bias against pro se parties. Are lack of bona fide intent cases really that big of a problem? I doubt it. Like anonymous said before I had a chance to, "How about a similar conference to weed out trademark bullies..."??

Trademark bullies such as Apple, Monster Cable, Entrepreneur magazine, are causing far more problems and havoc at the trademark office, and in the marketplace, then pro se lack of bona fide intent cases.

Thank you for your blog and opportunity to comment.

Scott Smith

At 4:34 PM, Blogger John L. Welch said...

No bias here against pro se applicants. And I don't like bullies. I think the Board might be able to deal with some of these nettlesome issues at any early stage: for example, my previous suggestion of an early hearing whenever fraud is alleged.

At 12:42 PM, Blogger Ron Coleman said...

Scott, trademark bullies are rotten lousy scoundrels, but the particular problem John is talking about -- unjustifiable ITU applications -- has very little to do with trademark bullies.

I think a bit more in the way of a speed bump, such as notification of the legal standard for being granted trademark rights, could be appropriate now that online applications have made it so easy for people who are unfamiliar with trademark law to apply for registrations.

At 10:10 PM, Anonymous Erik Pelton said...

Plenty of non-pro se applicants have listings of goods and services that are hard to believe feature "bona fide intent" for each item. For example, see recent application for SAMSUNG (S.N. 86095016) for items such as ibuprofen, human growth hormone, airplanes, animal hides, mannequins, hospitals, hotels, and much more.


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