Friday, October 02, 2009

Finding Lack of Bona Fide Intent, TTAB Sustains "MONT BLANC" Opposition

The TTAB entered summary judgment in favor of Opposer Montblanc in this opposition to registration of the mark MONT BLANC for one hundred thirty-two electronic items in Class 9. The Board found that Applicant United Brands lacked a bona fide intention to use the mark for the identified goods as of the application filing date. United's subjective statements of intent were unsupported by any documentary evidence or other objective proof. Montblanc-Simplo GmbH v. United Brands International, Inc., Opposition No. 91185637 (September 29, 2009) [not precedential].

Mont Blanc

After taking discovery, Opposer Montblanc moved for leave to amend its notice of opposition to add an additional ground for opposition: that at the time of filing the opposed application, Applicant lack of a bona fide intent to use the mark MONT BLANC in commerce for the identified goods. Opposer simultaneously moved for summary judgment on that ground.

As to the motion to amend, the Board found it timely because it was based primarily on information discovered during the deposition of applicant’s representative on May 1, 2009, and the motion was filed fewer than three weeks later. United did not show that it would be prejudiced by the granting of the motion.

With regard to the summary judgment motion, Opposer asserted that United failed to produce any documents demonstrating any preparation for using the mark in commerce; that United lacks experience with the various "high-tech" computer-related and technical goods identified in its application; and that United "has filed multiple applications for famous marks which share many of the same goods." [viz., BOSS, CATERPILLAR, DIESEL, PUMA, and TTABLOG. Well, actually only the first four.]

Applicant's representative testified on deposition that United's only preparation to use the MONT BLANC mark in commerce was "to create mock-up web pages for a website, but that applicant had not yet even secured a web address and that such mock-up web pages had been destroyed and proof thereof was not available."

United maintained that it had and has the requisite intent to use the mark, but that it has been unwilling to bring the products to market pending resolution of these proceedings.

The Board noted that "as a general rule, the factual question of intent is particularly unsuited to disposition on summary judgment."

However, the Board has held that the absence of any documentary evidence regarding an applicant’s bona fide intention to use a mark in commerce is sufficient to prove that an applicant lacks such intention as required by Section 1(b) of the Trademark Act, unless other facts are presented which adequately explain or outweigh applicant’s failure to provide such documentary evidence. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993), cited in Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660, 1662 (TTAB 2009). See also Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1586 (TTAB 2008).

The Board found that Opposer had made a prima facie case, which United failed to rebut.

Applicant has countered the motion and the documentary evidence produced by opposer with statements of subjective intent and unsupported statements that applicant "has taken steps and continues to take steps … pending resolution of this proceeding." *** This is not sufficient to raise a genuine issue of material fact.

Moreover, the Board found it probative that United "has not demonstrated that it has any experience in the field of electronics manufacturing or sales, despite the listing of 132
goods in that field."

In conclusion, the Board found "no evidence of applicant's bona fide intent to use the mark MONT BLANC in commerce with the goods identified in the involved application. That is, there is no genuine issue that applicant did not at the time it filed its application, nor does it now, have a bona fide intention to use the mark MONT BLANC."

TTABlog comment: The original notice of opposition raised Section 2(d) and dilution claims. After the Board entered summary judgment on the lack-of-bona fide-intent claim, it gave Montblanc 20 days to decide whether it wants to go forward with these two claims. If not, they "will be dismissed." This seems to me to be an unusual approach for the Board to take.

For example, when an Opposer pleads Section 2(d) and dilution and proves the former claim, the Board will simply decline to reach the dilution claim, sustaining the opposition on the 2(d) ground. The Board does not ask whether the Opposer wants to dismiss or pursue the dilution claim.

What should Montblanc do here? If the Board is talking about dismissal without prejudice, then that should not be a problem. But I understand that may not be what the Board is proposing. Why should Montblanc dismiss the claims with prejudice? But why waste the Board's time and the parties' time by continuing with the other two claims? Would a motion for suspension, pending appeal of the third claim, be appropriate?

TTABlog postscript: The Board dismissed the claims without prejudice (here).

Text Copyright John L. Welch 2009.


At 9:02 AM, Anonymous Paul Reidl said...

John, what I find more interesting about this case is the strong statements about what is needed to show bona fide intent to use. Perhaps strengthening this area of the law is the Board's way of dealing,in part, with the fallout from Bose? The result is the same -- at least for ITU applications;overly-broad applications will not be registered.

At 1:59 PM, Blogger John L. Welch said...

The lack of documentation and the lack of capability is a potent combination. What if an applicant has the capability but not the documentation? Do practitioners typically ask about documentation when they file an ITU for a client?


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