Friday, July 15, 2011

Precedential No. 15: Finding Lack of Bona Fide Intent, TTAB Sustains MOSKONISI Opposition

In this Section 2(d) opposition, Opposer Spirits established a prima facie case of lack of bona fide intent through Applicant's discovery responses. The burden then shifted to Applicant to come forward with evidence to rebut Opposer's case. Applicant S.S. Taris did not submit any evidence (nor did it file a brief). The Board therefore sustained the opposition on the ground of lack of bona fide intent, entering judgment immediately despite the fact that Opposer's claim of priority was contingent upon registration of its pleaded mark. Spirits International, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545 (TTAB 2011) [precedential].

Applicant sought to register the mark shown above for various alcoholic and non-alcoholic beverages in classes 32 and 33. Spirits opposed on the basis of its ownership of an ITU application for the mark MOSKOVSKAYA for vodka, claiming likelihood of confusion as to Applicant's alcoholic beverages. [In one of several interesting footnotes, the Board pointed out that although Spirits' 2(d) claim was limited to Applicant's alcoholic products only, Applicant made no attempt to divide out the non-alcoholic products, and so if Spirits were to prove a lack of bona fide intent as to any of the goods in a class, the opposition would be sustained as to the entire class].

The Board also noted that Spirits had standing to oppose, even thought it based the opposition on an ITU application, and even though its application had not been refused registration in light of Applicant's application.

In its discovery responses, Applicant stated that it had no documents regarding intended use, no promotional or marketing materials, and no marketing plans. Nor had it obtained any necessary permits or approvals to import or sell alcoholic beverages. Spirits therefore met its initial burden of "demonstrating by a preponderance of the evidence that applicant lacked on the filing date of the application, or now lacks, a bona fide intent to use the mark on the identified goods."

The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof sufficient to establish that the applicant lacks a bona fide intention to use its mark in commerce. See Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha Opposition, 26 USPQ2d 1503, 1507 (TTAB 1993).

The burden then shifted to applicant "to come forward with evidence which would adequately explain or outweigh the failure to provide such documentary evidence." Applicant provided nothing.

The Board therefore sustained the opposition on the ground of lack of bona fide intent.

Finally, the Board explained that, even though Opposer's likelihood of confusion claim was contingent on its obtaining registration of its mark in order to perfect its priority claim, the Board entered judgment immediately.

[W]e have already found that opposer has established that applicant lacked and continues to lack a bona fide intention to use its mark for at least some of the identified goods, i.e., alcoholic beverages, in each class that has been opposed. Because the opposition can be sustained on this ground alone, thereby denying registration to applicant without any delay to see if opposer can perfect its claim of priority, we decline to address opposer’s second ground of likelihood of confusion, and enter judgment solely on the ground of lack of a bona fide intent to use the mark.

TTABlog comment: If not for the twists and turns discussed in the footnotes, I think this would have been a rather straightforward decision, probably not deserving of the "precedential" moniker.

Text Copyright John L. Welch


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