IP Law Daily, TRADEMARK—TTAB: National Grange thwarts registration of HEADLEY GRANGE mark, (Jun 6, 2022)

By Ursula Furi-Perry, J.D.

The opposer successfully showed the applicant’s lack of bona fide intent to use the proposed mark in commerce.

Applicant, a capital management firm, sought registration of the mark HEADLEY GRANGE in connection with financial services. The National Grange (“Grange”) opposed the registration, pleading prior use and registration of twelve marks, as well as prior common law rights. The TTAB held that the Grange successfully showed the applicant’s lack of bona fide intent to use the proposed mark in commerce, sustaining the opposition to registration (National Grange of the Order of Patrons of Husbandry v. Tetra Capital Management LLC, May 17, 2022, Johnson, M.).

The applicant sought registration of the mark HEADLEY GRANGE in connection with financial services in International Class 36. The National Grange filed an opposition, pleading prior use and registration of twelve marks, as well as prior common law rights. Those marks included the use of HEADLEY GRANGE in connection with cigars, as well as the marks GRANGE, NATIONAL GRANGE, and NATIONAL GRANGE OF THE ORDER OF PATRONS OF HUSBANDRY, in a variety of international classes.

The nation’s oldest agricultural fraternal organization, the Grange is a District of Columbia non-profit corporation that was founded in 1867 “to promote the interests of farmers and farming in the United States.” Since then, the Grange has offered a variety of goods and services under its marks and common law rights. As grounds for opposition in this case, the Grange alleged that the applicant’s use of the HEADLEY GRANGE mark would create a likelihood of confusion, and that the applicant lacked a bona fide intent to use the mark in commerce. The applicant did not file a brief or introduce any evidence into the record.

Analysis. The Board first addressed an evidentiary issue regarding service of process. Although the Grange failed to include certificates of service with its initial filings, it did include the certificates with its original and amended trial briefs. As the applicant did not object, the Board deemed the procedural issue to be cured. The Grange established its right to a statutory cause of action, as it introduced into evidence copies of its pleaded registrations showing the status of and title to the registrations.

The TTAB addressed the issue of whether the applicant had a bona fide intent to use the mark in commerce, demonstrable by a fair, objective determination of the applicant’s intent under all of the circumstances. The Grange submitted evidence from the applicant’s responses to interrogatories, and the Board looked to those responses – and lack thereof – to derive that the applicant was not intending to use the mark in good faith.

“Applicant’s responses to Opposer’s discovery requests demonstrate that Applicant did not — and does not — have plans for advertising or promotion of its proposed mark, HEADLEY GRANGE, and that no such documentary evidence exists,” the TTAB noted. “Applicant has failed to proffer any documentary evidence regarding its intent to use its proposed mark, HEADLEY GRANGE, for Applicant’s Services (or any goods or services) prior to the filing date of the application or in the 43 months that have transpired since the application to register the proposed mark was filed, and we construe Applicant’s responses to Opposer’s document requests to mean that no such documents exist.”

The TTAB also noted that it did not need to reach the Grange’s likelihood of confusion claim, having held that there was no bona fide intent to use the mark in commerce.

Board action. The Trademark Trial and Appeal Board sustained the registration refusal solely on the basis of the applicant’s lack of bona fide intent to use the mark in commerce.

The Case is Opposition No. 91246647.

Attorneys: James L. Bikoff and Richard D. Rivera (Gambrell & Russell, LLP) for National Grange of the Order of Patrons of Husbandry. John S. Egbert, Michael F. Swartz, and Kevin S. Wilson (Egbert, McDaniel & Swartz, PLLC) for Tetra Capital Management, LLC.

Companies: National Grange of the Order of Patrons of Husbandry; Tetra Capital Management, LLC

Cases: Trademark USPTO