Wednesday, June 09, 2010

Finding Lack of Bona Fide Intent, TTAB Sustains "MIDDLE EARTH JEWELRY" Oppositions

Pro se Applicant Joseph M. Bumb got the TTABum's rush in his quest for registration of the marks MIDDLE EARTH JEWELRY and ARAGORN for various jewelry items. In light of Bumb's lack of documentation and his own testimony, the Board found the applications to be void ab initio due to Bumb's lack of bona fide intent to use the marks. The Saul Zaentz Company dba Tolkien Enterprises v. Joseph M. Bumb, Opposition No. 91170589 (May 18, 2010) [not precedential].

A 2008 Harris poll named Lord of the Rings as the third most popular book of all time. [Can you name the other two? - ed.] Opposer is a film production company that owns "the exclusive world-wide performance, motion picture and ancillary rights in and to the Tolkien works." It has licensed its Tolkien-related marks for many goods (including jewelry), and the films based on the series are the most successful movies in U.S. box office history.

Applicant Bumb "operates a store at the San Jose Flea Market in California, where he buys and sells a range of products including jewelry, collectibles and memorabilia. He also engages in the custom design and manufacture of jewelry."

Bumb admitted that he has no documentation relating to his intent to use the MIDDLE EARTH JEWELRY or ARAGORN marks. That statement alone established a prima facie case of lack of bona fide intent, and shifted the burden of production to Bumb. He submitted no evidence at trial on the issue, but in his trial testimony (taken by opposer) he testified that he couldn't recall whether he had an intent to manufacture or sell jewelry under these marks. "The only thing I did was trademark the name." [sic!]

Indeed, applicant’s testimony includes what essentially are his admissions that he filed his intent-to-use application merely to reserve a right in the MIDDLE EARTH JEWELRY mark “as an insulator or a buffer."

The same testimony and reasoning applied to the ARAGORN mark.

And so the Board found the applications void ab initio for lack of a bona fide intent to use the marks.

TTABlog comment: Opposer had to spend a lot of time and money to block these applications. It seems there should be a faster way to resolve cases like this. Unfortunately, in my experience, a summary judgment motion seldom does the trick because the Board seldom grants summary judgment. Let's face it, it's a lot easier to deny a summary judgment than to write a decision justifying the granting of one.

Text Copyright John L. Welch 2010.


At 7:22 AM, Anonymous Rob said...

Once again, the Board offers no jurisprudence which explains when a mark is "only" void, and when it is void ab initio. The Board just summarily grants whichever of the two it chooses, usually citing no reason or authority for the selected relief.

At 8:38 AM, Blogger John L. Welch said...

I haven't thought about that distinction, but maybe a registration is "void" when, for example, a false Section 8 declaration is filed. In other words, it was ok when filed and issued, and so not void from the start.
In the lack-of-bona-fide intent case, the application is void from the git-go.

At 9:04 AM, Anonymous Rob said...

Thanks for your comment, John!

To play devil's advocate -- something I usually take great pleasure in doing -- if it's a fraudulent Section 8/9 issue, why wouldn't we say that the renewal of the registration was void ab initio, and consequently, that the registration of the whole class effectively expired?

As for the ground of lack of bona fide intent, where do you find clear language that explains whether/why it's the entire class that is void, rather than just the specific goods/ services for which no bona fide intent existed? I don't disagree with the result, I'm just looking for authorities in support of it.

At 9:24 AM, Anonymous Paul Reidl said...

I have never understood the Board's aversion to granting summary judgment even where the evidence is undisputed. The whole point is to eliminate the cost and expense of trial because there is no contested fact to be tried.

At 9:48 AM, Blogger matthew h said...

Guesses for first two most popular books:
1) Bible
2) The Koran

This list puts Lord of the Rings at number 8.

At 10:08 AM, Anonymous Orrin A. Falby said...

John, are you saying that the Board could declare a registration "void" based on a false statement in the Section 8? If so, doesn't this go back to my previous point that this could be a way around having to plead fraud?

To me void is all inclusive, void ab initio as you have indicated is from the initiation of the application as the literal translation of ab inition suggests.

At 10:27 AM, Anonymous joe dreitler said...

It's void from the get go when an application fails to comply with the Lanham Act. Not that hard. If you claim the mark was in use on all the goods and it was not, it is void ab initio. If you didn't have a bona fide intent when you filed it, it's void ab initio. There was a great deal of discussion about this topic (which is part of the USTA TLRA history), so it should not be a surprise to anyone who considers themself a trademark lawyer.
On the other hand, John's point is well taken. While fraud is out and the TTAB is rightfully trying to get rid of applications/registrations that should never have been filed post-Bose, formal Opposition proceedings and summary judgment is simply not a cost effective way of doing the job.

At 10:53 AM, Blogger John L. Welch said...

Rob: I don't know of any authority that says that,if you have no bona fide intent as to some goods in a class, the whole class is knocked out. That's why I think it's better to plead fraud based on the false statement of intent, than just the lack of bona fide intent.

At 10:54 AM, Blogger John L. Welch said...

Orrin: I was talking about fraud in the Section 8. I don't think there is any case law that holds a registration void due to a false verification alone.
I have suggested that perhaps the Board should so hold, in order to avoid the complications that come along with fraud.

At 11:12 AM, Blogger John L. Welch said...

The Board's comments in Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006) support my understanding that absent fraud, a false declaration will not result in the application being declared void ab initio:

"Therefore, in the absence of a fraud claim, an applicant who bases its application on Section 1(a) (use in commerce) but who did not use the mark on some or all of the goods or services identified in the application may 'cure' this problem by amending its basis to Section 1(b) (intent to use)."

At 11:44 AM, Anonymous Rob said...

joe dreitler wrote:
"It's void from the get go when an application fails to comply with the Lanham Act."

Joe, I honestly have the utmost respect for your opinions. But what you're saying here goes against the clear language of Bose 2009. Bose's attorney did not comply with the Lanham act and yet their registration still stands. I know you passionately disagree with Bose and have brought up excellent arguments in opposition. But until it's reversed/ overruled, it's the law of the land and we should treat it as such.

Now that fraud is harder to establish, the renewed interest in the ab initio doctrine was designed to get the relief that traditionally has only been granted in cases of fraud. If this expansion of the doctrine becomes settled law, i.e. that Sections 1(a) and 1(b) would be proper substitutes for the fraud ground, then they would get a plaintiff the same relief, without having to prove its case by "clear & convincing evidence" -- mere "preponderance of evidence" would do.

At 11:57 AM, Anonymous Anonymous said...

Further to John's comments at 10:53 and 11:12, lack of bona fide intent is only effective against those goods/services for which it is shown, not the entire class. See Wet Seal Inc. v. FD Mgmt. Inc., 82 U.S.P.Q.2d 1629, 1633 (T.T.A.B. 2007) ("contrary to opposer's contention, an application will not be deemed void for lack of a bona fide intention to use absent proof of fraud, or proof of a lack of bona fide intention to use the mark on all of the goods identified in the application, not just some of them. Thus, we will decide this issue in terms of whether the items, if any, for which opposer has shown applicant's lack of bona fide intention to use the mark should be deleted from the application.").

At 4:06 PM, Anonymous Rob said...

Anonymous: Great case citation, which is directly at odds with the result that Board has reach herein in John's main post here.

I suspect this contradiction is only possible since, as I had pointed out in the first talkback, the Board has no jurisprudence which even attempts to explain when the ab initio doctrine would apply and when it wouldn't. I believe any decision rendered in this situation, without explanation or authority, would fall under "arbitrary and capricious" -- exactly like the Board's recent order denying leave to amend because a fee wasn't attached. The CAFC reversed it as arbitrary and capricious because the Board had no settled policy on whether a fee was required at the motion phase or not. The same applies here.

At 4:55 PM, Blogger John L. Welch said...

Rob: Why is the Wet Seal case at odds with today's MIDDLE EARTH JEWELRY case? In the latter, Mr. Bumb had no intention to use the mark on ANY of his goods: ergo, the application was void ab initio.
Wet Seal says that just because an applicant does not have a bona fide intent as to SOME of the goods, that doesn't mean the whole application is void ab initio.

At 5:09 PM, Anonymous Rob said...

John: I stand corrected. Thanks for the note.

At 5:27 PM, Anonymous Orrin A. Falby said...

Thanks for clearing this up for me Anonymous.

At 9:23 AM, Anonymous Anonymous said...

I may be a bit late in reviewing this and providing a comment; My comment is that this seems to be the type of case where using the TTAB ACR would be appropriate and possible a quicker and less expensive way to get to resolution.
John do you know if Opposer used ACR in this case??
Query: Are parties using ACR?? It would be interesting to know if parties are using it and does it work to expedite cases?

At 9:46 AM, Blogger John L. Welch said...

No ACR. Opposer took a lot of trial testimony.


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