Tuesday, November 18, 2014

Despite Lack of Documentation, Applicant Had Bona Fide Intent to Use "HARD CANDY" for Luggage, Says TTAB

In this dispute over the mark HARD CANDY, opposer claimed that the opposed application was void ab initio because applicant lacked a bona fide intent to use the mark in connection with the identified goods (leather goods) when the application was filed (March 27, 2009). Opposer relied on applicant's "pattern" of filing several dozen Section 1(b) applications for various goods, only to abandon them by failing to submit a Statement of Use. And it pointed to applicant's lack of pre-filing documentation that pertained to leather goods. The Board found, nonetheless, that applicant did have an intention to expand its line of products to leather goods. Hard Candy Cases, LLC v. Hard Candy, LLC, Opposition No. 91195328 (November 13, 2014) [not precedential].

Applicant relied on a pre-filing email to a potential licensing representative, in which it stated its goal of extending HARD CANDY into a "lifestyle brand." The only products specifically mentioned, however, were cosmetics. Applicant's witness testified that applicant had some communications with the potential representative in which handbags were discussed. Several post-filing emails did refer to leather goods, including one that concerned a meeting with Walmart, to whom applicant had sold cosmetic products since 2008.

The Board found that applicant's documentation and testimony were consistent and supportive. It was applicant's intention in talking to potential licensees and representatives to build a lifestyle brand. "In fact, ... the crux of Applicant's efforts was expansion into those product lines which Walmart would agree to purchase and sell, whether leather goods, jewelry, watches or perhaps something else."

Applicant ultimately succeeded in expanding its use of HARD CANDY into 'other categories such as sunglasses, cosmetic bags and apparel,' ... and that would not have happened unless Applicant intended it to happen.

Although applicant's intention to sell leather goods hinged on Walmart's agreement to buy them, that still qualified as a bona fide intention to use the mark. Moreover, post-filing documentation is admissible to corroborate the existence of a pre-filing bona fide intent.

Although applicant intention may have been focused more on expansion generally than on leather goods specifically, "that does not mean that Applicant's intent to use its mark on leather goods (and other products) was not bona fide." Given applicant's experience and demonstrated ability to expand its product line, its expansion into leather goods is entirely credible.

Finally, as to the dozens of abandoned trademark applications, the Board recognized that this may, in some circumstances, evidence a lack of bona fide intent. However, intent to use applications are often abandoned, for a variety of legitimate reasons. Here, it is undisputed that applicant did expand its business line from cosmetics to other products, and at the time of filing it intended to expand into leather goods.

And so the Board dismissed the opposition.

Read comments and post your comment here

TTABlog note: Reminds one of the ROLL-X case, in which the applicant had a bona fide intent to use the mark on x-ray tables, although it lacked pre-filing documentation. There, the filing of the ROLL-X application was consistent with an extension of applicant's product line, and applicant had the capacity to manufacture and market the goods. [TTABlogged here].

Text Copyright John L. Welch 2014.


Post a Comment

<< Home