Lack of Bona Fide Intent Sinks Application to Register JUICY FRUIT & Design for T-shirts

The Board sustained this opposition to registration of JUICY FRUIT & Design (shown below) for" t-shirt for adults," finding that pro se Applicant David Neal Seller's lacked a bona fide intent to use the mark for t-shirts at the time he filed his application. His lack of documentation provided Opposer Fruit of the Loom with a a prima facie case. Sellers failed to overcome that presumption. Fruit of the Loom, Inc. v. David Neal Sellers, Opposition No. 91268870 (December 21, 2023) [not precedential] (Opinion by Judge Christen M. English).

Opposer Fruit of the Loom bore the “burden of demonstrating by a preponderance of the evidence that [A]pplicant lacked a bona fide intent to use the mark on [‘t-shirts for adults’]” when he filed the involved application on August 19, 2020. An opposer may establish a prima facie case "by proving that an applicant has no documentary evidence to support the allegation in its application of a bona fide intent to use the mark in commerce as of the application filing date." Once an opposer establishes a prima facie case, "the burden shifts to the applicant to rebut that prima facie case by producing evidence which would establish that it had the requisite bona fide intent to use the mark when it filed its application."

Applicant admitted (by failing to timely respond to opposer's admission requests) that he had no sales of identified goods, did not disseminate any advertising of the goods, had no business or marketing plan, had not customer or manufacturer contacts, etc. He also stated in his initial disclosures that he had no such documents. The Board found that opposer had established a prima facie case of lack of bona fide intent. The ball was then in Applicant Sellers' court to rebut that prima facie case. The Board considered the entire record for "evidence that may support or undercut a finding of a bona fide intent to use."

Opposer had submit certain documents and had made statement that the Board review took into account. Applicant Sellers had submitted on the same day he filed the subject application, and application to register the mark DOUBLE STUFF in the same design for clothing, including t-shirts for adults. That application issued to registration in December 2021. Opposer acknowledged that Sellers offers these t-shirts on his website.

The Board noted that "evidence that an “applicant has the capacity to market and manufacture the goods identified in its application” may support a finding that the applicant had the requisite bona fide intent to use required under Section 1(b) . . . ." However, the Board distinguished this case from Rolex and Wet Seal, where it found that an applicant’s "capacity to market the goods in the application supported that the applicant had a bona fide intent to use its mark when it filed the intent-to-use application."

In Rolex, the applicant filed an intent to use application for the mark ROLL-X for “x-ray tables for medical and dental use.” 101 USPQ2d at 1191. The record showed that the applicant registered the mark DENT-X for goods including “x-ray machines” more than a decade before filing its application for the ROLL-X mark. Id. at 1197. *** Based on this evidence, we concluded that “the filing of the application for the ROLL-X mark” was “consistent with an extension of [the applicant’s] current product line” and rebutted the absence of documentary evidence supporting applicant’s intent to use the ROLL-X mark.

Here there was no such evidence of an existing product line and" no testimony or other evidence to show that [the Board] should infer that his intention was to go to market with the mark involved in this proceeding.

In Wet Seal, there was no evidence that the applicant lacked documentary evidence to support its claim of a bona fide intent to use the mark. Instead, the opposer relied solely on the testimony of applicant’s executive vice president and chief marketing officer. *** The opposer failed to ask the witness questions “which fully explored the applicant’s actual intent” and some of the witness’s testimony was “ambiguous.”  We found the evidence that applicant had the capacity to manufacture or market the goods outweighed the ambiguous testimony of the sole witness testifying to applicant’s bona fide intent to use.

Although opposer acknowledged that Sellers had the capacity to sell various t-shirts in 2023 (as evidenced by screenshots of Sellers' website), that was too far removed in time from Sellers's filing date "to demonstrate that Applicant actually had the intent to use the involved mark in connection with “t-shirts for adults” when he filed the involved application."

The Board concluded that due to Sellers' lack of evidence "to rebut Opposer’s prima facie case to show that he had a 'firm' and 'demonstrable' intent to use the mark for 't-shirts for adult' when he filed his application, as required under Section 1(b) of the Trademark Act" the Board sustained the opposition.

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TTABlogger comment: One wonders whether the result might have been different if Sellers were represented by counsel.

Text Copyright John L. Welch 2023.