M.Z. Berger & Co., Inc., v. Swatch AG, No. 2014-1219, 2015 U.S. App. LEXIS 9276 (Fed. Cir. Jun. 4, 2015) (Chen, J.). Click Here for a copy of the opinion.
In 2008, Swatch filed a Notice of Opposition to M.Z. Berger's application for registration of the mark "iWatch" for use on watches, clocks, and related goods. The Trademark Trial and Appeal Board (TTAB) agreed with Swatch that Berger lacked a bona fide intent to use the mark in commerce, and the opposition was sustained. The Federal Circuit affirmed, finding that an applicant's lack of bona fide intent to use a mark in commerce at the time of the application constitutes grounds to oppose the registration. The Court clarified that proving a bona fide intent requires objective evidence that an applicant's intent to use the mark is "firm" and is not merely an attempt to reserve a right in the mark.
The Federal Circuit agreed with the TTAB's long standing position that lack of bona fide intent to use a mark in commerce is a valid basis to oppose a trademark application. The Court found that to establish a "bona fide intention" under Section 1(b)(1) of the Lanham Act, the applicant's intent must be "demonstrable and more than a mere subjective belief." Whether an applicant's intention is bona fide should be assessed on an objective basis, taking into consideration the totality of the circumstances. While the bar to prove a bona fide intention is not high and does not require actual use of the mark at the time of the application, it requires more than a mere intent to reserve a right to use the mark to "leave [] options open."
Viewing the testimonial and documentary evidence presented by Berger as a whole, the court agreed with the TTAB that Berger had not demonstrated a bona fide intent to use the "iWatch" mark in commerce at the time the application was filed. The documentary evidence presented by Berger only related to prosecution of the application and not use of the mark. In addition, conflicting testimony presented by Berger and his associates indicated that, when the application was filed, Berger had not yet made a firm decision about whether to use the mark in commerce. The fact that Berger had a history in the watch industry and the capacity to produce watches was irrelevant to the any specific intent to use the iWatch mark. The TTAB's decision was consistent with USPTO practice and was based on an "objective inquiry" of the evidence presented by Berger.
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