Monday, October 24, 2016

TTAB Enters Summary Judgment in TIGER SHARK Opposition - Lack of Bona Fide Intent

The Board granted Opposer Heinekin Asia Pacific's motion for summary judgment in this opposition to registration of the mark TIGER SHARK for beer, finding that Applicant Claypool lacked the requisite bona fide intent to use the mark in commerce when he filed his Section 1(b) application to register. Heineken Asia Pacific Pte. Ltd. v. Jonathan A. Claypool, Opposition No. 91220927 (September 26, 2016) [not precedential].

As we know, the lack of documentary evidence regarding an applicant's alleged bona fide intent is sufficient proof, absent adequate explanatory evidence, to demonstrate that applicant lacked a bona fide intention to use the applied-for mark in commerce at the time of filing. See Commodore Electronics Ltd. v. CBM Kaubshiki Kaisha, 26 USPQ2d 1503 (TTAB 1993).

Applicant Claypool admitted that he had no written plans to manufacture or sell beer under the mark, had not discussed distribution with any distributor, had not manufactured any type of beer, and had no retail marketing plan. He admitted that he had no documents regarding adoption of the mark, no labels or packaging, no advertising or marketing materials, no business plans, and no documents regarding money spent, potential consumers, or manufacturing of beer.

He stated that he has "no immediate plans to market beer, but plans to do so in 2 or 3 years, but has "no specifics in place."

Claypool asserted that he has "a simple mental memorized plan that is in fact a basic business plan," that he has been actively performing research and development regarding the production of beer, including taste testing by third parties, and that he has conducted clearance searches and has prosecuted additional mark as part of a collective plan.

Nonetheless, the only documents that Claypool submitted were his application to register, a copy of an ITU application that he filed on behalf of a third-party with whom he discussed financing for a brewery, and a TESS search report for the TIGER SHARK mark.

The Board observed that it has consistently held that neither the filing of an ITU application nor a trademark search is sufficient to establish a bona fide intent. Nor does the filing of applications for other marks suffice. In fact, the filing of multiple applications for various marks, combined with his estimate that he is two or three years from marketing a product, at a minimum casts doubt on his bona fides.

And so the Board granted the motion for summary judgment.

Read comments and post your comment here.

TTABlog comment: Oh well, he would have lost on the Section 2(d) ground anyway

Text Copyright John L. Welch 2016.


At 4:27 PM, Anonymous joe dreitler said...

John, your last comment was spot on, the Applicant was very dead from a 2d standpoint in any event. I'm not sure why Heineken found itself needing to file an Opposition to start. Tiger is a very famous and well established brand of beer and how or why Tiger Shark for beer got pubbed is a bit of a mystery.

At 11:22 AM, Anonymous Anonymous said...

I'm not so sure about the 2d claim although Heineken certainly has the resources to prevail which is sometimes more important at the TTAB than the merits. There are quite a few TIGER marks for beer out there in the marketplace such that consumers won't assume all beers with TIGER in their name come from the same source. Sixpoint makes (or made) a well regarded Bengali Tiger American IPA (registered) and Great Lakes makes a Rye of the Tiger rye IPA (registered). There is also Flying Tiger Brewery in NOLA (opposed), Tiger Creek Brewery in Louisiana (opposed) and Three Tigers Brewing in Ohio (opposed). Beer Advocate lists another dozen or so beers with TIGER in their names. There are also quite a few "retired" beers with TIGER names so it appears Heineken has been busy sending out letters. Incidentally, Beer Advocate and The Bros rate TIGER (Singapore) beer as "poor" so perhaps they would be benefit by a bit of association with good beers...


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