Precedential No. 7: Finding Lack of Bona Fide Intent, TTAB Sustains Opposition to MIRACLE ON 35th STREET

I am delighted to see that the TTAB has given equal time to the White Sox, after making us read through that drivel about the Cubs finally winning the World Series after a 108-year drought. The Board granted a motion for summary judgment in this opposition to registration of the mark MIRACLE ON 35th STREET for printed materials and various clothing items, ruling that Applicant William W. Yedor lacked a bona fide intent to use the mark on the identified goods at the time of filing his Section 1(b) application. A&H Sportswear Co., Inc. v. William W. Yedor, 2019 USPQ2d 111513 (TTAB 2019) [precedential].

Applicant's later filed this specimen of use
[The White Sox have for more than a century played at 35th and Shields on Chicago's South Side. Hence, the adaptation of the Christmas movie title, "Miracle on 34th Street" to refer to any rare success of the franchise.]

The evidentiary burden to establish a bona fide intent to use is not high, but more is required than “a mere subjective belief.” The objective evidence must indicate an intention that is “firm” and “demonstrable.” The absence of documentary evidence supporting an applicant’s bona fide intention to use the mark in commerce establishes a prima facie case that the applicant lacks such intention. The applicant may overcome that presumption by presenting facts that adequately explain or outweigh its failure to provide documentary evidence. See Spirits Int’l., B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1549 (TTAB 2011); Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660, 1662-64 (TTAB 2009); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1891 (TTAB 2008); Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993).

Applicant Yedor, appearing pro se,  never got to first base. He claimed that he "intends to sell T-shirts, owns the domain name whitesoxshirts.com, has one shirt design, gave friends and family a “prototype T-shirt” in 2005 [eleven years before his filing date], and plans to build a website in the event the Chicago White Sox win the World Series." [The White Sox did win the World Series in 2005 - ed.].

Yedor produced only one document during discovery, an image of the 2005 t-shirt. He identified no other products that he planned to sell and no classes of purchasers for his goods. Yedor identified no documents showing use of, or steps toward using, his mark on any products, or showing advertising, promotions, media, marketing plans, business plans or packaging materials or expenditures. He did not produce documents identifying any outlets, distributors or resellers through which he intended to offer or offers his goods. Furthermore, Yedor responded that he has no documentation of any business or marketing plan; any prospective purchasers, or any websites to display his products.

The Board observed that the lack of documentation from the time of filing is "highly probative" of Yedor's lack of a bona fide intent to use the applied-for mark at that time.

Although evidence that post-dates the filing date may be probative of an applicant's intent at the time of filing, here the only document that Yedor produced was dated eleven years before the filing date of his application. Neither the filing of the application nor Yedor's ownership of the domain name whitesoxshirts.com constitute evidence that he had a bona fide intent to use the mark as of the filing date. Yedor did not provide any evidence demonstrating that he engaged in any activities "even somewhat contemporaneous with the February 26, 2016 filing date."

Yedor asserted that he planned to launch his business once the legal issue is resolved and "once the White Sox fan base has something to cheer about – making marketing efforts worthwhile and successful.” The Board, however, observed that Yedor’s hopes are insufficient to show bona fide intent. See Lincoln Nat’l. Corp. v. Anderson, 110 USPQ2d 1271, 1277 (TTAB 2014).

The Board concluded that opposer established the absence of a genuine dispute of material fact regarding Yedor's lack of the requisite bona fide intent to use his mark at the time of filing his application; that Yedor failed to rebut this prima facie case with any evidence that bears upon his intent to use; and that opposer is entitled to judgment as a matter of law.

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TTABlog comment: Oh well. At least, as a White Sox fan, Mr. Yedor is used to losing.

Text Copyright John L. Welch 2019.