IP Law Daily, TRADEMARK—TTAB: Registration of IRISH POLO CLUB USA refused, (Nov 5, 2013)

By Peter Reap, J.D., LL.M.

Rich C. Young’s (“applicant’s”) attempt to register the mark IRISH POLO CLUB USA and an accompanying design was refused by the Trademark Trial and Appeal Board because the applicant did not have a bona fide intent to use the mark in commerce at the time he filed his application (PRL USA Holdings, Inc. v. Young, October 16, 2013, Per curiam). Thus, the opposition filed by PRL USA Holdings, Inc., the owner of the trademarks of the Polo Ralph Lauren Corporation, including the famous “Polo” fragrance mark, was sustained.

Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), states that “a person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce” may apply for registration of the mark. An applicant’s bona fide intent to use a mark must reflect an intention that is firm, though it may be contingent on the outcome of an event (that is, market research or product testing) and must reflect an intention to use the mark in the ordinary course of trade, and not merely to reserve a right in a mark, the Board noted.

As a general rule, the factual question of intent is unsuited to disposition on summary judgment. Nonetheless, one way an opposer could establish its prima facie case of no bona fide intent is by proving that applicant has no documentary evidence to support its allegation in the application of its claimed bona fide intent to use the mark in commerce as of the application filing date, the TTAB explained.

The opposer alleged that, based on the applicant’s discovery responses, the applicant did not have the required bona fide intent to use his mark at the time of filing his application. Specifically, the opposer referred to the applicant’s responses to interrogatories nos. 1, 3, 5-6, and 8-9. Those interrogatories asked, in general, that applicant indentify, inter alia, the products to be sold under applicant’s mark, the applicant’s general revenue and/or goods sold (without regard to whether the revenue or goods are in association with applicant’s mark) in past years, and any market research conducted with respect to the applicant’s mark.

The applicant’s response to each of these interrogatories was that he was in an “intention to use status” and that he did not have “any business planning yet.” The opposer also referred to the applicant’s lack of document production in response to requests to produce documents regarding his agreements, proposals or negotiations to sell and/or license his products. The applicant responded to those document requests by indicating that no documents exist. In response to the opposer’s motion for summary judgment, the applicant argued that his interrogatory responses and lack of document production were a result of being in an “intention to use status” and not yet being open for business.

The record demonstrated that the applicant had no documentary evidence of business plans, marketing or promotional activities, nor any discussions with manufacturers or licensees which could substantiate his claim of a bona fide intent to use applicant’s mark in commerce as of the filing date of the application, the TTAB determined. The applicant failed to produce any evidence of any current business, whether related to the goods listed in applicant’s application or otherwise. His response to the motion for summary judgment did not include any objective evidence of “circumstances showing…good faith,” and did not support a finding that his intent to use was bona fide.

The applicant’s intent at the time he filed his application was “merely to reserve a right in the mark” in case it was later approved for registration by the USPTO; and that he would only at some unspecified future time begin developing a business, the Board reasoned. This was not a bona fide intent to use the mark in commerce as defined by Section 45 of the Trademark Act on the identified goods.

Accordingly, the opposer’s motion for summary judgment was granted on its claim of no bona fide intent to use the mark in commerce and registration was refused.

The case is Opposition No. 91206846.

Attorneys: Daniel I Schloss (Greenberg Traurig LLP) for PRL USA Holdings, Inc.

Companies: PRL USA Holdings, Inc.

Cases: Trademark USPTO