TTAB Enters Summary Judgment: Applicant Lacked Bona Fide Intent
The Board granted Opposer's motion for summary judgment, ruling that Applicant failed to demonstrate its bona fide intent to use the marks EDGEPULL and EDGEPEEL for "primarily non-metal seals comprised of various layers including a metallic foil layer for use in container closures and caps,” as of the date that it filed the opposed applications. The Board therefore declared the applications to be void ab initio and it sustained the oppositions. Tekni-Plex, Inc. v. Selig Sealing Products, Inc., Oppositions Nos. 91214508 and 91215874 (November 25, 2015) [not precedential].
Under Commodore Electronics, a party may may establish a prima facie of lack of bona fide intent by showing that the other party lacks any documentary evidence regarding its intent to use the mark in question. In response to opposer's discovery requests, Applicant Selig failed to produce any pertinent documentation on the issue.
In response to the motion, Selig submitted pages from its website showing the history of the company and its products and services. However, nowhere did the marks at issue appear on the webpages, nor was there even an indication of when the webpages were created.
The Board found that opposer had thus established a prima facie case. Applicant Selig did not provide evidence that it even had a bona fide intent to use the subject marks.
Applicant has not come forward with evidence indicating for example, current business plans, ongoing discussions, or promotional activities to corroborate its claim of a bona fide intent to use either EDGEPULL or EDGEPEEL in commerce. In sum, Applicant has produced no evidence supporting or confirming the bona fide intent to use the mark in commerce which it asserted in its two involved applications.
Viewing the evidence in the light most favorable to the non-movant, "the record does not indicate" that Selig had a bona fide intention to use the subject marks on or in connection with the identified goods as of the application filing dates. The Board therefore granted the motion for summary judgment and deemed the applications void ab initio.
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TTABlog comment: On second thought, this decision seems rather harsh. Why would one expect to see the mark on the webpages when the application is an ITU? Isn't this case like the ROLL-X case of a few years ago, where the applicant already had the capability of producing the identified products and was just adding additional product of the same type and nature to its product line? I know from experience that clients come up with new marks and file on them even without having documented plans to use the mark. But they have the capability of putting the mark into use at any time. For example, a new name for a pizza by a restaurant chain; the new mark can be added to the menu very quickly.
Text Copyright John L. Welch 2015.
posted by John L. Welch @ 12/01/2015
3 comments
3 Comments:
When counseling small business clients, does this mean that before filing any ITU application, that counsel either require documentation as to their intent be made, or request a review of any documentation to see if there is 'enough' to form an intent? When working with smaller business clients, it has been my experience that not many of them document a lot of their decision making, and in fact decisions may be made by one or two people--primarily the business owners--with no actual documentation. Does this open them up to attack on the grounds they lacked bona fide intent?
Just tell your clients for 1(b) applications to write up a simple business plan on a Word template dated prior to the application date...that is all you need.
The INTENT is at the time of filing right? So what difference does anything that happens after the filing have to do with the intent?
I think that most people decide upon a brand - hopefully after clearing it first - file an application to lock in the priority date, wait until approval of the application and see if anyone objects, then they work on putting that mark in use.
With increased fees on the horizon for ITO extensions will that create an incentive to get marks in use more quickly?
On another note, why would the fee for an extension of time need to increase. This is one fee that has no cost to the USPTO and must be a major money machine!
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