Tom & Martha LLC's application to register the mark LOCH MOOSE MONSTER for gift shop goods and services survived a feeble summary judgment attack by frequent TTAB plaintiff Monster Energy, who claimed that the applicant lacked a bona fide intent to use the mark in commerce. Although the evidence did not show that applicant "took concrete steps to launch all the goods and services in its application," it did show applicant's "capacity to market" them. The existence of a genuine issue of material fact as to applicant's bona fide intent precluded summary judgment. Monster Energy Company v. Tom & Martha LLC, 2021 USPQ2d 1197 (TTAB 2021) [precedential].
The Board observed that "an application will not be deemed void for lack of bona fide intention to use absent … proof of a lack of bona fide intention to use the mark on all the goods identified in the application, not just some of them." Wet Seal, 82 USPQ2d at 1633. "[A]s long as the mark was used on some of the identified goods or services as of the filing of the application, the application is not void in its entirety." Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697 (TTAB 2006). And in Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1943 (TTAB 2013), the Board explained that in an opposition involving a claim of lack of bona fide intent to use, amending the identification is permissible “to reflect those goods with which [the party] has a bona fide intent to use the mark.”
Opposer relied on the deposition testimony of one of applicant's principals, Mr. Byrne, but many of his statements were qualified and "when read in their entirety, reveal that Applicant’s plans to expand were contingent on whether the business was a success." For example:
- “But if it had taken off, or if it does take off, then we could do it”;
- “If it takes off and they were going to sell, sure”; and
- “But I’m not going to rule it out if it was going to take off. I’m not going to say well, I’ll never do that.”
Applicant argued, and Mr. Byrne confirmed in a declaration, that applicant is a small business that has developed a number of marks intended for use on a wide range of consumer goods; its brand development strategy is to identify a brand, file an intent to use application for the intended goods, and then start the process of bringing the goods to market. Moreover, applicant produced photographs showing use of its LOCH MOOSE MONSTER mark on hooded sweatshirts, t-shirts, canvas tote bags, hats, and mugs.
The Board observed that "[e]vidence that a party has the capacity to market or manufacture a product can rebut a lack of bona fide intent to use claim." Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1643 (TTAB 2007).
Although the record does not show that Applicant took concrete steps to launch all the goods and services in its application, it does not necessarily indicate the absence of a genuine dispute of material fact that Applicant lacked a bona fide intent to use its mark in commerce in connection with the identified goods and services as of the application filing date. See Wet Seal, 82 USPQ2d at 1643. The evidence of record, and in particular the Byrne declaration, show Applicant has the capacity to market goods and services such as those listed in its application. See id.
The Board found that a genuine dispute of material fact exists with respect to, at a minimum, the issue of whether the applicant "lacked a bona fide intent to use its mark on any particular goods and services in each class identified in the application as of the application filing date." It therefore denied the motion for summary judgment.
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TTABlogger comment: Would you have moved for summary judgment? (or WYHMFSJ?) PS: not the clearest decision I've ever read.
Text Copyright John L. Welch 2021.
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