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M.Z. Berger & Co. v. Swatch AG - 787 F.3d 1368 (Fed. Cir. 2015)

Rule:

Whether an applicant for trademark registration had a bona fide intent to use the mark in commerce at the time of the application requires objective evidence of intent. 15 U.S.C.S. § 1051(b)(1). Although the evidentiary bar is not high, the circumstances must indicate that the applicant's intent to use the mark was firm and not merely intent to reserve a right in the mark. 15 U.S.C.S. § 1127. The Trademark Trial and Appeal Board may make such determinations on a case-by-case basis considering the totality of the circumstances.

Facts:

M.Z. Berger & Co., Inc. (Berger) was a business that manufactures, imports, and sells watches, clocks, and personal care products. On July 5, 2007, it filed an intent-to-use application at the Patent and Trademark Office (PTO), seeking to register the mark "iWatch" for over 30 different goods, each of which belonged to one of three general categories: watches, clocks, and goods related to watches and/or clocks (e.g., clock dials, watch bands, and watch straps). The application included a declaration which stated that Berger has a “bona fide intention to use or use through Berger's related company or licensee the mark in commerce on or in connection with the identified goods and/or services." The PTO approved the application for publication. Thereafter, Swatch AG (Swatch) filed a Notice of Opposition on the basis that “iWatch” was confusingly similar to its mark, “Swatch.” Swatch later added a claim opposing the mark on ground that Berger lacked a bona fide intent to use the mark in commerce at the time Berger filed the application. The Board decided that, although some of Berger’s evidence, reviewed in isolation, may have been sufficient to establish intent, the circumstances as a whole – including the lack of documentary evidence and the conflicting testimony of the Berger witnesses – demonstrated that Berger lacked a bona fide intent to use the mark in commerce as required, and sustained the opposition under Section 1(b) of the Lanham Act. Berger appealed the decision. 

Issue:

Was Berger’s intent-to-use application at the Patent and Trademark Office properly denied based on lack of a bona fide intent to use the mark in commerce?

Answer:

Yes.

Conclusion:

The Court first noted that a bona fide intent to use a trademark not in actual use was a proper statutory grounds on which to challenge an application for registration of the mark since lack of such intent was a basis on which an opposer could challenge the applicant's mark. In the case at bar, the Court held that Berger’s application was properly denied based on a lack of a bona fide intent to use the mark in commerce since the applicant's documentary evidence related only to prosecution of the trademark application, there was no evidence of development of smart watches upon which the mark was allegedly intended to be used, and the applicant's witnesses provided inconsistent testimony concerning whether images of the mark on watches were created for prosecution or for business reasons.

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