Monday, September 14, 2015

Precedential No. 30: Finding Lack of Bona Fide Intent, TTAB Sustains SWISS GRILLS Opposition

In a case decided under the TTAB's Alternative Case Resolution (ACR) procedure, the Board sustained an opposition to registration of the mark SWISS GRILLS for "barbecue and outdoor grills," finding that applicant Wolf Steel Ltd. lacked the necessary bona fide intent to use the mark for the identified goods when it filed its Section 1(b) application to register. The Board also sustained opposers' Section 2(d) claim, ruling that opposers had established prior use of its mark SWISS GRILL & Design for the same goods, based upon opposers' shipment of products bearing the mark to its U.S. distributor. Swiss Grill Ltd., John Hartwig, Christopher Hartwig and Matthew Hartwig v. Wolf Steel Ltd., 115 USPQ2d 2001 (TTAB 2015) [precedential].

Bona Fide Intent: A party may establish a prima facie case of lack of bona fide intent by demonstrating that the other party lacks any documentary evidence demonstrating such intent. Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993). Here, none of the documents provided by applicant was dated prior to its filing date, and none related to its intention to use the SWISS GRILLS mark in the United States. Although a party may rely on documentary evidence dated after its filing date to establish its bona fide intent at the time of filing, there was no evidence - other than the application itself - that applicant ever intended to use the SWISS GRILL mark in the United States.

There was evidence that Applicant Wolf Steel offered typical outdoor grills in other countries prior to its filing date, but here applicant claimed that in the United States it intended to sell "specialty grills" for indoor use, and not the typical outdoor grill. Applicant Wolf Steel also claimed that it had conducted a trademark search prior to its filing, but it never produced the documentation relating to that search. In any case, the Board pointed out, "[n]either the application itself nor the unproduced trademark search suffice[s] to establish Applicant's intent." See M.Z. Berger & Co. v. Swatch AG, 215 USPQ2d 1892, 1898 (Fed. Cir. 2015).

The Board concluded that applicant's assertions amounted to "little more than subjective claims of intention, rather than objective evidence." Moreover, applicant's discovery responses and its evidence included inconsistencies that undermined the credibility of even its subjective claim of a bona fide intent.

To be blunt, the record as a whole reveals that Applicant is unable to get its story straight. *** In fact, its evolving and internally inconsistent story lines read more as after-the-fact rationalizations, than as credible evidence of a bona fide intent to use SWISS GRILLS in the United States for the identified barbeques and outdoor grills. These inconsistencies, combined with “the general lack of documentary support” or other objective evidence of its bona fide intent to use the mark leads us to find that Applicant’s intent at the time it filed the application was not a bona fide intent to use the mark in commerce.

Therefore, the Board sustained opposers' claim that applicant lacked a bona fide intent to use the mark SWISS GRILLS for the identified goods when it filed its application to register.

Likelihood of Confusion: There was no dispute that there is a likelihood of confusion between the marks at  issue. Therefore, opposers' Section 2(d) claim "boils down to priority."

Prior to applicant's filing date (its priority date), opposers had sold and shipped 322 barbeque grills bearing the subject mark SWISS GRILLS to its United States distributor. The Board observed that "the sale and shipment of products bearing a trademark to one's distributor is clearly sufficient to establish trademark rights." Raintree Publishers, Inc. v. Brewer, 218 USPQ 272, 274 (TTAB 1983). Applicant provided nothing to contradict the record evidence that opposers and its U.S. distributor have an arms-length, independent relationship.

And so the Board sustained opposers' Section 2(d) claim as well.

Read comments and post your comment here.

TTABlog comment: Pretty straightforward, don't you think?

Text Copyright John L. Welch 2015.


At 11:50 PM, Blogger Cheryl L. Hodgson said...

This is a great reminder to us all to counsel clients filing under 1(b) to ascertain their plans if any to really use the mark. This is actually a great decision!


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