IP Law Daily, TRADEMARK—TTAB: University of Texas opposition to a hand symbol trademark sustained, (Jul 22, 2022)

By Donielle Tigay Stutland, J.D.

An applicant lacked a bona fide intent to use an upside down hand symbol mark that was similar to the university’s registered “hook em horns” hand symbol.

The Trademark Trial and Appeal Board sustained an opposition to the registration of a mark brought by an Applicant looking to register an image of a downward hand symbol. The Board of Regents of the University of Texas opposed the application because it was likely to cause confusion with its registered Upward Hand Design Mark, commonly known as the “hook em’ horns” hand gesture. Following discovery, the University added a claim that the Applicant had not shown a bona fide intent to use the applied-for mark for the identified goods at the time he filed his application. The TTAB concluded that the discovery evidence showed that the Applicant lacked a bona fide intent to use in commerce his applied-for mark for the identified goods at the time he filed his application and sustained the opposition (Board of Regents of the University of Texas System v. Beaver, June 29, 2022, Lykos, A.).

Background. The Board of Regents of the University of Texas is the owner of an Upward Hand Design Mark, which is licensed to a wide variety of companies to use in connection with decals, clothing, athletic apparel, hats, toy foam novelty items, namely, foam hands, masks, shot glasses, mugs, insulated beverage containers, bumper stickers, and related products to promote the University of Texas at Austin’s athletic program.

An individual filed an application to register a mark with a similar hand symbol, although the hand was facing down. The application for the Applicant’s Downward Hand Design Mark was for “Decals” in International Class 16; “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms” in International Class 25; and “Toy foam novelty items, namely, foam fingers and hands” in International Class 28. The application claimed a bona fide intent to use in commerce.

The University opposed the application for the mark, on the grounds that it was likely to cause confusion with its Upward Hand Design Mark, as well as false suggestion of a connection, likelihood of dilution by blurring, and likelihood of dilution by tarnishment. Following discovery, the University added an opposition claim that application lacked a bona fide intent to use the mark in commerce when it was filed.

Intent to use mark. The Board noted that the Opposition bears the burden of establishing its entitlement to a statutory cause of action and claims by a preponderance of the evidence. It noted that the Opposer presented evidence that it is the owner of the Upward Hand Design Mark and the mark has been widely used in commerce for almost 20 years.

The Board began by looking at the Opposer’s lack of a bona fide intent to use the mark in commerce claim and indicated that if the Board determines that the Applicant lacked a bona fide intent as of the May 23, 2019, filing date, then there would be no reason to look at the other claims, as the application would be void. To meet its burden, the University presented testimony and evidence from discovery to show that the Applicant did not have a bona fide intent to use the mark in commerce. During a discovery deposition, the Applicant confirmed that he had no plans in place to use the mark and in commerce and was merely seeking the ability to reserve the right to use the mark by keeping his options open. As a response to written discovery requests, the Applicant confirmed he had “no plans” to use the Downward Hand Design Mark, “only a mere desire to reserve a right in the mark at some undetermined point in the future.” Additionally, in response to requests from the University, the Applicant produced no documentary evidence of his bona fide intent to use the applied-for mark in commerce during discovery. He confirmed that “there are no identifying documents sufficient to demonstrate such actual or planned sales and promotions” of the applied for goods in connection with the Downward Hand Design Mark.

The Board determined that the Applicant’s lack of production of any evidence to prove an intent to use the mark, combined with Applicant’s express admissions during discovery and in his discovery deposition, confirm that he lacked any bona fide intent whatsoever to use the Downward Hand Design Mark in commerce as of the application filing date. The Board sustained the opposition on the ground that Applicant lacked a bona fide intent to use in commerce the Downward Hand Design Mark for the goods identified at the time of the application.

The Case is Opposition No. 91253492.

Attorneys: Jered E. Matthysse (Pirkey Barber, PLLC) for Board of Regents of the University of Texas System. Kendall A. Beaver, pro se.

Companies: Board of Regents of the University of Texas System

Cases: Trademark USPTO