Friday, December 04, 2009

Precedential No. 47: TARR Printouts of Pleaded Registrations Acceptable at Trial

Trademark Rule 2.122(d)(1) permits the introduction of a pleaded registration into evidence if the original opposition or petition for cancellation is accompanied by TARR printouts showing the status and title of the registrations. But what about introduction at the trial stage? Rule 2.122(d)(2), seems to preclude the use of mere TARR printouts. Not so, says the Board. TARR printouts are acceptable at trial. Research In Motion Limited v. NBOR Corporation, 92 USPQ2d 1926 (TTAB 2009) [precedential].

Applicant NBOR sought to register the mark BLACK MAIL for "computer software for facilitating interactive communication, namely, chat, electronic mail, voice, instant messages, text transfer, multi-media transfer, live collaboration, motion pictures, and sound over a global computer information network and other networks." RIM opposed on the ground of likelihood of confusion with its registered BLACKBERRY marks for a variety of goods and services in the wireless telecommunications field. RIM also contended that NBOR lacked a bona fide intent to use its mark in commerce when the opposed application was filed.

NBOR raised several evidentiary objections, the most interesting being its attack on RIM's registration evidence. RIM submitted its registrations in the form of TARR printouts as part of its notice of reliance, and NBOR argued that this violated the Trademark Rules. The Board, however, concluded that the 2007 amendment of Rule 2.121(d)(1) to allow TARR printouts with the original pleading "can only be taken as an indication that the Office meant to liberalize the means for providing a pleaded registration." Therefore, the Board decided that this same liberalization should apply at the trial stage, despite the wording of Rule 2.122(d)(2). [Note that this liberalization applied only to proceedings commenced on or after August 31, 2007.]

Turning to the issue of bona fide intent, RIM "met its burden ... by showing that applicant has no documentary evidence regarding such intent." See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993). Moreover, in its discovery responses NBOR indicated that its mark has not been used; that there are no plans as to how the mark may be used; that there is no projected date of first use, no consideration of channels of trade, no determination as to classes of customers or geographic areas of sales, no market studies, and no plan for growth or expansion.

So as to be clear, the record is completely devoid of any evidence such as product design efforts, manufacturing efforts, graphic design efforts, test marketing, correspondence with prospective licenses, preparation of marketing plans or business plans, creation of labels, marketing or promotional materials, and the like.

NBOR's mere statement that it intends to use the mark, and its denial of a lack of bona fide intent, is outweighed by the lack of objective evidence and clearly cannot suffice to resolve the issue.

Finally, the Board noted that NBOR had twice previously filed applications to use the mark BLACK MAIL, and in each case the application went abandoned for failure to file a statement of use. The legislative history of the Trademark Law Revision Act discusses bona fide intent, and gives examples of circumstances that "may cast some doubt on the bona fide nature of the intent or even disprove it entirely." One example is the filing of numerous intent-to-use applications to replace applications that have lapsed because no timely statement of use was filed. The Board found that NBOR's filing of successive applications also supports the conclusion that NBOR lacked the requisite bona fide intent.

And so the Board sustained the opposition on this ground, declining to reach the issue of likelihood of confusion.

TTABlog note: Even had the registrations not been accepted into evidence, it appears that RIM provided evidence of use of the marks that would have given it standing to proceed with the opposition.

Text Copyright John L. Welch 2009.


At 1:42 PM, Blogger MEH said...

Since the Federal Circuit overruled Board precedent that “conflicts with the plain language of the regulation" in the recent Cold War Museum case, I find it very odd that the Board would ignore the plain language of the Rules with the TARR printouts here.

At 5:59 PM, Anonymous Rob said...

It does conflict with the plain language, but because the Board can allow a pleading to be amended at any time, it can simply grant leave to amend the pleading to include the printout as an exhibit.


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