Thursday, January 05, 2012

TTAB Sustains BIG TEXAS 2(d) Opposition, But Denies Lack-of-Bona-Fide Intent Claim

We don't see many cases wherein a defendant, despite a lack of supporting documentation, overcomes a claim of lack of bona fide intent. But it happened in this opposition, in which the Board sustained Opposer's 2(d) claim, finding Applicant's mark TEXAS BIG BITES for "organic pastries" likely to cause confusion with opposer's marks BIG TEXAS for danish, pastries and sweet bakery products and BIG TEXAS BUTTERKRUNCH for sweet bakery products. Cloverhill Pastry-Vend, LLC v. 10 Star Enterprises, Inc., Opposition No. 91181131 (December 16, 2011) [not precedential]

Section 2(d): Not much to see here. The Board's took its usual romp through the du Pont factors: goods legally identical; Opposer's marks strong in the marketplace; third-party registration of little probative value; marks similar in sound and appearance; connotation and commercial impression of "Big Texas" unaffected by reversal of words.

Lack of bona fide intent: Discovery revealed that Applicant did not have any business plans, advertising or sales records, or list of customers. Under Commodore Electronics the lack of documentary evidence to support Applicant's alleged bona fide intent is sufficient to establish a prima facie case that the application is invalid ab initio.

Here, however, Opposer itself submitted evidence (Applicant's interrogatory responses) indicating that Applicant has continuously used its mark on cookies for the past decade, has sold these cookies through personal contacts in Maryland and Florida, and has sold them to coffee shops and "personal customers." These were not "organic" cookies, however. Applicant stated that she was looking for appropriate organic ingredients.

The Board concluded that Opposer had failed to meet its burden of proof because:

opposer submitted evidence that applicant had been selling cookies, albeit not organic cookies, under its mark prior to the filing of its application, and that applicant was searching for the proper organic ingredients to use in its organic cookies. Furthermore, applicant’s lack of documents could be explained by applicant’s lack of sophistication with respect to starting a business.

And so the Board found that, on this record, Applicant "did, in fact, have a bona fide intent to use its mark."

TTABlog comment: Well, one might say, "that's the way the cookie crumbles." But I won't.

This case reminds me of Bristol Technologies [TTABlogged here], where submission of an allegedly fraudulent specimen of use was excused because Bristol's president was a layperson. Where does it say that "laypersons" don't have to play by the same trademark rules as the rest of us?

Text Copyright John L. Welch 2011.


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