Wednesday, July 15, 2015

TTAB Deflates Feeble Attacks on SWISSBIKE Application and SWISS MILITARY Registration for Bicycles

The Board issued a single opinion in these two proceedings, which were consolidated solely for purposes of submitting a single trial brief for both matters. It dismissed the cancellation proceeding directed at Montague Corp.'s registration of the mark SWISSBIKE for "bicycles" because Petitioner Montres Charmex S.A. failed to establish its standing. The opposition to registration of the mark SWISS MILITARY, also for "bicycles" (under Section 2(f)), was dismissed because Montres Charmex "failed to meet its initial burden of demonstrating that Defendant had failed to meet its ultimate burden of acquired distinctiveness." Montres Charmex S.A. v. Montague Corp., Opposition No. 91191784 and Cancellation No. 92052183 (July 6, 2016) [not precedential].

Standing: Montres Charmex did not submit any admissible and/or probative evidence regarding the nature of its activities or its interest in registrant's SWISSBIKE trademark. A National Arbitration Forum decision regarding the domain name "" was irrelevant because the term "swissmilitary" is distinct from SWISSBIKE, and in any case an arbitration decision does not prove commercial use.

Entries for "Switzerland" in a dictionary and a business directory did not reference Montres Charmex and in any case would have been considered inadmissible hearsay with regard to any statements regarding its business. An excerpt from the Guinness Book of World Records referring to a Swiss Military Watch made by Montres Charmex, while admissible as a printed publication, could not be relied upon to prove the truth of the matters stated therein (i.e., hearsay). Montres Charmex did not submit any testimony regarding its activities.

The Board concluded that Montres Charmex failed to show that it had a "real interest" in the proceeding and a "reasonable belief in damage," and so the Board dismissed the cancellation on the ground of standing.

Acquired Distinctiveness In the opposition proceeding, Applicant Montague admitted in its answer that Montres Charmex owns the domain name "" and that it uses that domain in its business. That was sufficient to establish standing.

The only claim pursued by Montres Charmex was contention that the mark SWISS MILITARY had not acquired distinctiveness under Section 2(f). The examining attorney had deemed the mark merely descriptive because, as Montague acknowledged, the goods are made for the Swiss Military to its design specifications.

Montres Charmex contended that the Section 2(f) declaration submitted by Montague was void because Mr. Montague signed the declaration as "President," when in fact he was "Clerk" and "Treasurer." This, argued Montres Charmex, amounted to "intentional misrepresentation" and "perjury."

The Board observed that in an opposition proceeding, the opposer has the initial burden of showing that an applicant's mark has not acquired distinctiveness. When the opposer meets that initial burden challenging the sufficiency of applicant's evidence of acquired distinctiveness, then applicant may submit additional evidence to rebut opposer's prima facie case. The ultimate burden of persuasion is ultimately on the applicant.

The USPTO had found acquired distinctiveness based only on Montague's Section 2(f) declaration of five years of "substantially exclusive and continuous use." Montres Charmex did not contend that the SWISS MILITARY mark was so "highly descriptive" as to require a heightened showing under Section 2(f). Instead, its attack was based solely on the "purported technical deficiencies in the execution of the declaration."

Montres Charmex submitted documents from Massachusetts state records to show that Mr. Montague was not President of Montague Corp. However, those record established that he was an officer of the company during the relevant time period. He therefore had the requisite legal authority to bind the corporation, and thus to sign the declaration, pursuant to Trademark Rule 2.193(e)(1). The declaration was not invalid just because the title of the signatory was misstated.

The Board concluded that Montres Charmex had failed to meet its initial burden regarding the acquired distinctiveness issue, and so it dismissed the opposition.

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TTABlog comment: These proceedings dragged on for six years! The equivalent of a slow-motion train wreck.

Text Copyright John L. Welch 2015.


At 6:43 AM, Anonymous Anonymous said...

The application subject to the opposition was filed in 1996. (!!!) That's not slow motion; it's Kinetoscope-by-mail.


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