Wednesday, October 19, 2016

On Summary Judgment, TTAB Sustains BONNIE CASHIN Opposition For Lack of Bona Fide Intent

The Board sustained an opposition to registration of the mark BONNIE CASHIN for backpacks, handbags, and clothing, finding that applicant Stephanie Lake lacked the necessary bona fide intent to use the mark in commerce when she filed her Section 1(b) application. Applicant Lake's lack of documentary evidence regarding her alleged bona fide intent was sufficient to support the Board's granting of opposer's motion for summary judgment, under Commodore Electronics Ltd. v. CBM Kaubshiki Kaisha, 26 USPQ2d 1503 (TTAB 1993). The Trustees of the Bonnie Cashin Foundation, Lucia Keller and David Baum v. Stephanie Day Lake, Opposition No. 91213081 (October 12, 2016) [not precedential].

The Board has held that when there is no evidence of an applicant's bona fide intent to use the applied-for mark in commerce when it filed its application to register, entry of summary judgment is appropriate. See Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009). [TTABlogged here]. Applicant pointed only to the declaration that her counsel signed when filing her application, but she admitted that she had not taken any steps to use the mark. Her business strategy was not finalized, she hadn't commenced advertising, and hadn't determined specific channels of trade or volume of goods to be distributed.

The Board concluded that applicant had taken no actual steps toward preparing to use the BONNIE CASHIN mark on the identified goods, and had only a subjective intent to use mark when she filed the involved application.

Prior to January 2012, when she filed her application, applicant Lake was employed by opposer, and she represented to consumers that the BONNIE CASHIN mark identified opposer as the source of the goods and services offered at its website. She testified on deposition that her first step toward launching the brand was the filing of the involved application.

In sum, the Board found no evidence that applicant has a bona fide intent to use the mark BONNIE CASHIN on the identified goods when she filed her application.

Therefore the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: According to Wikipedia, Bonnie Cashin was "an influential American designer and is considered one of the pioneering designers of American sportswear." Stephanie Lake's book about Bonnie Cashin was published in 2016.

Text Copyright John L. Welch 2016.


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

I wonder if performing an availability search before filing the application would be evidence of bona fide intent.

At 1:13 PM, Anonymous Anonymous said...

What a load of malarkey! So if she had a one page "business plan" document she would have the requisite "documentary" aka "objective" evidence to support a bona fide intent? Really? This just creates the endless trail of opposition claims based on this drivel. All of this going back to the lazy Commodore decision which has zero support in the statute. According to that case, a "firm" intent is equal to documents and it must be "objective" as opposed to "subjective". Really? And we can glean all of this from a senator rambling back in 1988? Someone please run this up the flag pole so the TTAB can be put back in their place on this issue.

At 8:34 PM, Anonymous Anonymous said...

I have been filing trademark applications for over 30 years. Prior to the 1988 amendments it was necessary to file a specimen of use and make an allegation of use in commerce in all applications.

This led to the practice of arranging a token sale of just one item bearing the mark for the sole purpose of filing a federal application. The odious nature of this "token use" practice, which was upheld as perfectly acceptable by the courts, was a principal motivation for the institution of ITU filings. The requirement for a declaration of bona fide intent to use was to added to avoid mass filings for purpose of selling them to the highest bidder, as is now routinely done with URLs.

Unfortunately, it has come back to the point where now token business plans should be prepared and dated before filing. I recommend the one-page malarkey kind.

At 9:25 PM, Blogger John L. Welch said...

I disagree that the Board would accept a "token business plan" as proof of intent to use. I believe it would want to see some action toward accomplishing the plan.

BTW, how many attorneys, when they file ITU's, ask their clients whether there is documentation supporting the alleged bona fide intent?

At 1:01 PM, Anonymous Anonymous said...

IMHO there has never been widespread trafficking of "token use" applications as this is just an unsupported ghost story. Token use (pre ITU) was more connected with a company needing to protect a mark before it was ready to hit production so they made a few products and slapped the label on before filing, and is still practiced today with regard to legacy trademarks where companies print a t-shirt or keychain (or use old specimens) to keep their rights in a no longer used mark (mainly to keep others from adopting). This practice was not the main reason why the ITU provisions were enacted in the '88 amendments, as they were put in to comport the U.S. with foreign TM practices using first to file (with a long view towards Madrid). In fact, there was widespread opposition that the ITU provisions would create excess bogus applications (albeit not token) which proved to be well founded. IMHO transfer restrictions on assignments take care of illegitimate filings anyway, without resorting to "objective" evidence. If the goal of ITU applicant is to traffic the mark (and assign while ITU or after bogus SOU), the resulting registration would always be subject to cancellation. If the lack of intent is eventually "cured" by the same applicant legitimately using the mark and filing the SOU...what harm is there if no trafficking occurred?

In response to JW, do you see the problem with going down the road with objective evidence? What action is enough? As Anonymous (8:34 PM) said above, whatever evidence becomes the standard will be included in the ITU evidence by sophisticated filers. This will lead to the sophisticated illegitimate filers being approved and the common man (who can still file without an attorney) being stripped of their application. Should the USPTO just include a section on the ITU application for applicant to state its efforts to use the mark (akin to the XOT "market research" check the box)?

Apologies to all for the rambling dissertation.


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