United States: Saul Zaentz Co. v. Bumb, Opp. No. 91156452 (TTAB June 28, 2010)

Incontestable Trademark Newsletter - July/August 2010

Opposer's opposition to Applicant's registration of the mark MITHRIL for jewelry was sustained by the TTAB on the ground that Applicant lacked a bona fide intent to use the mark in commerce. The TTAB found that Applicant lacked any documentary evidence relating to its intent to use, and failed to provide a credible explanation or excuse for its absence. Further, Applicant admitted that it filed the application merely to reserve rights in the MITHRIL mark with only vague plans for its use. Such factors established that Applicant lacked the requisite bona fide intent to use the MITHRIL mark in commerce.

CASE SUMMARY

FACTS

Joseph Bumb ("Applicant") applied to register the mark MITHRIL for jewelry as an intent-to-use application. The Saul Zaentz Co. d/b/a Tolkien Enterprises ("Opposer") opposed the registration on the grounds that Applicant lacked the requisite bona fide intent to use the mark in commerce, and Applicant's mark was likely to cause confusion with Opposer's MITHRIL mark.

Opposer is a film-production company and had acquired exclusive worldwide rights in the series of fantasy literary works authored by J.R.R. Tolkien, including The Fellowship of the Ring, The Two Towers, The Return of the King, and The Hobbit (collectively "the Tolkien Works"). Opposer has used and licensed the various trademarks based on names, objects, places, and events depicted in the Tolkien Works for a variety of goods and services, including jewelry. Opposer does not own a registration for the MITHRIL mark, but owns several registrations for the various marks associated with the Tolkien Works covering, among other goods, jewelry. The Tolkien Works define "mithril" as a mythical precious metal, an origin and definition recognized by the Oxford English Dictionary.

Applicant owns a company named American Precious Metals and operates a store at the San Jose Flea Market in California. Applicant buys and sells numerous goods, including jewelry, collectibles, and memorabilia, and designs and manufactures custom jewelry. Applicant adopted the MITHRIL mark because of its significance to the Tolkien Works.

ANALYSIS

Although Opposer based its opposition on both likelihood-of-confusion and lack-of-bona-fide-intent grounds, the TTAB only addressed the lack-of-bona-fide-intent claim.

The TTAB first recognized that Opposer had the requisite standing to oppose the Applicant's registration. Although Opposer did not own a registration for the MITHRIL mark, one of Opposer's licensees had marketed collectible miniature figures under the trade name MITHRIL MINIATURES since the late 1980s. Such use was sufficient to find that Opposer had a real interest in the outcome of the proceeding and a reasonable basis for believing it would be damaged by the registration of Applicant's mark.

Acknowledging that the initial burden of demonstrating that Applicant lacked a bona fide intent to use the MITHRIL mark for jewelry rested with Opposer, the TTAB outlined the factors required to meet this burden. Specifically, the TTAB noted that while an applicant's subjective assertion of an intent to use a mark in commerce is insufficient to establish a bona fide intent, an applicant's lack of any documentary evidence alone may be sufficient to establish a lack of a bona fide intent.

Applying these guidelines, the TTAB found that Opposer had met its burden of establishing a prima facie case that Applicant lacked the requisite bona fide intent. In reaching this holding, the TTAB found that, while Applicant had registered the domain names mithrilsilver.com, mithrilsilver.net, and mithrilsilver.org one month before filing its trademark application, it had not taken any other steps to construct or operate a site at any of these domains. Moreover, Applicant had admitted that, apart from registration of the domain names and the trademark application at issue, Applicant had no other documents relating to its adoption or intended use of the mark in commerce. Such deficiency alone established a prima facie case of a lack of bona fide intent.

In addition, the TTAB noted that Applicant's testimony affirmed that it had adopted the mark because of its significance in the Tolkien Works, and that it filed the application merely to reserve a right in the term MITHRIL. Moreover, Applicant was unable to answer basic questions about the goods to be offered under the mark, the intended market, marketing plans, prices of the goods, whether the goods would be sold in retail outlets, and whether Applicant had developed any prototypes. The TTAB viewed this testimony as establishing that Applicant had "nothing more than a vague plan for, or concept of, how he would actually use the MITHRIL mark in commerce on jewelry . . . ." This testimony, combined with the lack of any documentary evidence, further supported Opposer's prima facie case of a lack of a bona fide intent to use.

After Opposer established a prima facie case, Applicant assumed the burden to rebut Opposer's case by producing evidence that it had the requisite intent at the time the application was filed. Notably, however, Applicant had failed to submit any evidence or testimony at trial. Faced with Applicant's repeated, bald assertions of subjective intent, the TTAB examined Applicant's statement in its brief that Opposer had sent a cease-and-desist letter regarding the MITHRIL mark to which Applicant complied. Such compliance, Applicant argued, was now being used by Opposer to allege a lack of bona fide intent. The TTAB noted several inconsistencies regarding the date on which Applicant received the letter and, therefore, whether compliance would establish Applicant's bona fide intent to use the mark when the application was filed. Thus, the TTAB was not persuaded by Applicant's argument that his compliance with the cease-and-desist letter explained or excused the absence of documentary evidence.

Accordingly, the TTAB sustained the opposition, holding that Applicant lacked a bona fide intent to use the MITHRIL mark in commerce at the time the application was filed.

CONCLUSION

This decision highlights the continued importance of preserving documentary evidence in order to demonstrate a bona fide intent to use an applied-for mark in commerce on or in connection with the identified goods or services. In the absence of such documentary evidence, or a credible excuse or explanation for the absence of the same, the TTAB has repeatedly held that an application may be rendered void in whole or in part.

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