Tuesday, April 27, 2010

TTAB Enters Summary Judgment: Applicant Lacked Bona Fide Intent to Use "FEAR THE FRIARS" for Clothing

Applicant's lack of documentary evidence to support his claim of bona fide intent to use the mark FEAR THE FRIARS for various clothing items, and his inability to point to other evidence that would explain or outweigh his non-documentation, led the Board to grant the summary judgment motion of Opposer Padres, L.P. and to deem the application void ab initio. Padres L.P. v. Rene Galvan Munoz,Opposition No. 91187852 (April 15, 2010) [not precedential].

Opposer Padres asserted that Applicant Munoz's written discovery responses established a prima facie case of lack of bona fide intent, and that Munoz's statements of subjective intention were insufficient to overcome Opposer's case. Munoz claimed that he did not "publish" any of his thoughts regarding his products in order to avoid any trademark infringement actions until he obtained a registration. [How would he get a registration without first using the mark publicly? - ed.]

The Board noted that Munoz has no current business plans, ongoing discussions, or promotional activities, no use of his mark, no licensees, no trademark search results, no website, no designs or logos, no sample products, and no marketing plans. [And no hope here - ed.]

Munoz countered with statements of subjective intent. He stated that he has "made plans on how [he] would proceed if granted the mark, but [has] not put those thoughts down on paper."

The Board ruled that the Padres had made out a prima facie case which, if unrebutted, would suffice to establish lack of bona fide intent. Munoz, however, failed to identify any evidence that might explain or outweigh his lack of documentary evidence or might otherwise establish the requisite intent. Munoz failed to show that he is "in the business of or capable of marketing the clothing identified in his application." His statement regarding his desire to avoid a possible infringement action "does not establish that he had a bona fide intent to use the mark when he filed the application."

And so the Board found that there is no genuine issue of material fact regarding the Padres' bona fide intent claim, and it entered summary judgment against Munoz.

TTABlog comment: It's not often that the San Diego Padres win anything, so let's give them a hand. BTW: Munoz intended to sell his goods to Padres' fans, so if he didn't lose on this ground, he would have lost on the likelihood of confusion ground: the Padres own the registered mark FRIARS.

Text Copyright John L. Welch 2010.


At 12:05 PM, Blogger Sheila Fox Morrison said...

It appears that with the lower fraud standard, and fewer fraud cases, the Board is now focusing on enforcing the standard of "objective evidence” of a bona fide intent. Finally… This kind of a decision should help us convince our foreign colleagues that long laundry lists of goods and services do not provide added protection to the applicant, but actually put the resutling registration at risk.

At 2:38 PM, Anonymous Douglas White said...

He does have one document showing intent: his canceled check from the PTO for at least $275 covering his ITU application. What was that for - charity? In a case reported here a few days ago finding intent to resume use from a very similar PTO filing, "common sense supports the conclusion that Mattel would not have recorded Tyco’s trademark assignment with the USPTO in 1998 unless it intended to use the CRASH DUMMIES mark within the foreseeable future." Mattel, Inc. v. The Crash Dummy Movie, LLC, Opposition No. 91159002 (November 25, 2008). Mattel spends $25 to record an assignment (along with that of countless other Tyco marks) without really giving the matter a second thought: intent shown. Joe Schmo spends ten times that - probably a third of his paycheck - on his dream, improbable as it may be, of becoming the next NO FEAR: no intent. Just common sense.

At 4:48 PM, Anonymous Anonymous said...

It's just as likely that Joe Schmo doesn't have a clue about trademark law and doesn't understand that a trademark is more than just reserving a name before anyone else does, unlike domain names. The whole point of an intent to use standard is to prevent the reservation of a mark by someone who has no interest in actually using it in commerce. Your example is completely dissimilar to the case here, Tyco successfully profited from actual use of the Dummy marks and Mattel looked to do the same. That had to do with abandonment of a prior use. Joe Schmo had an intent to file a TM application, but zero intent to use the mark in commerce.


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