Thursday, May 24, 2007

TTAB Sustains Opposition to I-T-U Application Due to Lack of Bona Fide Intent

In a rare ruling on "intent to use," the Board sustained an opposition to registration of the mark IDEAS INSIDE for on-line ordering and distribution services for a host of goods (including more that 200 items of clothing, from "anoraks" to "wrestling uniforms"), search engine services, and digital transmission services. Applicant Steven Emeny, appearing pro se, failed to produce any objective evidence of an intent to use the mark, and therefore failed to overcome Opposer Intel Corp.'s prima facie case. Intel Corp. v. Emeny, Opposition No. 91123312 (May 15, 2007) [not precedential].

Intel had opposed on Section 2(d) and dilution grounds, based on its ownership of the INTEL INSIDE mark. After discovery, it added an allegation that Applicant lacked a bona fide intention to use the mark IDEAS INSIDE at the time of his I-T-U filing. Just before final briefs, at Intel's initiative, the Board dismissed the 2(d) and dilution claims, with prejudice. Thus the sole remaining "issue" was Applicant's intent.

The Board ruled that Intel's "earlier allegation of likelihood of confusion is accepted as a proper allegation of opposer's standing with respect to" the issue of Applicant's bona fides. [See TTABlog comment below].

Opposer had the burden to prove, by a preponderance of the evidence, that Emeny lacked the requisite bona fide intention to use his mark in connection with the recited services. Once Opposer established a prima facie case, the burden shifted to Emeny to come forward with evidence in refutation. The burden of persuasion, however, remained with Opposer.

The term " bona fide" is not defined within the Trademark Act, but the legislative history of the Trademark Law Revision Act of 1988 "reveals that Congress intended the test of 'bona fide' to be shown by 'objective' evidence of 'circumstances' showing 'good faith.'"

The Board agreed with Intel that "applicant's showing should be 'objective' in the sense that it is evidence in the form of real life facts measured by the actions of the applicant, not by the applicant's later arguments about his subjective state of mind."

Where, as here, an Applicant has no documentation to show his plans to use the mark, "such an absence of clear, objective evidence is sufficient for an opposer to prove that applicant lacked the requisite bona fide intention," unless the Applicant can come forward with an explanation as to why no such documents exist. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993).

The Board found that the circumstances of this case support the conclusion that Emeny lacked the requisite bona fide intent. The instant application (like eight other applications filed by Emeny and later abandoned) includes "an unreasonably broad listing of goods and services." Yet there was no evidence of any business plans, nor any evidence of a single business contact with any potential partner who would supply the goods that Applicant would sell. Indeed, on cross-examination, Emeny admitted that he wanted to "make sure that nobody else [can] take advantage of those marks." This "defensive motivation" is the type of potential abuse that concerned Congress.

Emeny wholly failed to rebut Intel's prima facie case. In response to discovery requests, Emeny did not divulge any business or marketing plans, or any relevant discussions. He admitted that he conducted no specific planning and never promoted or sold any goods under the mark. In short, he provided no evidence of a bona fide intent to use the mark. Under Commodore, the "failure to produce any objective evidence of an intent to use is sufficient basis for ruling in Intel's favor."

Therefore, the Board sustained the opposition.

TTABlog comment: A very interesting ruling, and perhaps the first in which the Board has found no bona fide intent to use.

But I'm troubled by the standing issue. Once Intel's Section 2(d) and dilution claims were jettisoned, what standing was left? At that point, did Intel step into the role of a "mere interloper?" Since it was no longer alleging likelihood of confusion or dilution (and indeed those claims had been dismissed with prejudice), how did it still have standing to complain? The cases cited by the Board do not address that point; they merely say that a party that claims likelihood of confusion has standing to raise the bona fide intent issue, but they do not say that its standing remains if and when the 2(d) claim is dropped.

I can understand why Intel dropped the dilution claim: the marks at issue are not substantially identical. But why did Intel drop the Section 2(d) claim? Was it afraid that the Board would rule on both the intent issue and the likelihood of confusion claim, and that it would lose on the latter?

Text Copyright John L. Welch 2007.


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