Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 LANE LIMITED
JACKSON INTERNATIONAL TRADING COMPANY KURT D. BRUHL GESELLSCHAFT M.B.G. & CO.
Opposition No. 92,025
October 21, 1994
Before Cissel, Hohein and Hairston
Administrative Trademark Judges
By the Board:
R.F. Cissel, G.D. Hohein and P.T. Hairston
Administrative Trademark Judges
Applicant Jackson International Trading Company Kurt D. Bruhl Gesellschaft m.b.G. & Co. has filed an application to register the mark depicted below
for "tobacco, matches, cigarette holders and cases, pipes, cigarette lighters and tobacco jars" in International Class 34. [FN1] Applicant is an Austrian corporation, and has filed this application pursuant to Trademark Act Section 44(d), 15 U.S.C. Section 1126(d), based on an Austrian application filed October 10, 1991. [FN2] As required by Section 44(d), the application includes applicant's declaration that "applicant has a bona fide intention to use the mark in commerce on or in connection with" the identified goods.
Registration has been opposed by Lane Limited, a New York corporation, which alleges three grounds of opposition. [FN3] First, opposer alleges that, since before applicant's claimed priority date, opposer has used a "sailing ship design" on packaging for and in advertising and promotion of its pipe tobacco sold under the CAPTAIN BLACK trademark, and that applicant's mark so resembles opposer's previously used "sailing ship design" as to be likely, when applied to applicant's goods, to cause confusion, mistake or to deceive. For its second ground of opposition, opposer alleges that, despite applicant's declaration in the application to the contrary, applicant did not have a bona fide intention to use the mark on or in connection with the goods identified as "tobacco" as of the application filing date. For its third ground of opposition, opposer alleges that applicant had never used the applied-for mark anywhere in the world prior to the filing of the application, and for that reason applicant was not the owner of the mark at the time of the filing of the application.
Applicant filed an answer denying the salient allegations of the notice of opposition.
This case now comes up on the parties' cross-motions for summary judgment on opposer's second ground of opposition, which consists of opposer's allegation that applicant is not entitled to a registration of its mark for the goods identified in the application as "tobacco" because applicant lacked the requisite bona fide intention to use the applied-for mark in commerce on those goods as of the application filing date.
In support of its motion for summary judgment, opposer argues that applicant's responses to opposer's discovery requests reveal that applicant lacks evidence sufficient to establish that it had a bona fide intention to use the mark in commerce on the goods identified in its application as "tobacco" as of the application filing date, and requests entry of summary judgment in its favor as to those goods. Opposer's arguments are discussed in more detail below. Opposer's motion for summary judgment is accompanied by copies of its discovery requests and applicant's responses thereto.
*2 Applicant, in response to opposer's motion and in support of its cross-motion for summary judgment, has submitted copies of some of the same documents submitted by opposer, as well as additional documentary evidence and the declaration of its principal. Applicant contends that this evidence is sufficient to establish, as a matter of law, its bona fide intention to use the mark in commerce on tobacco, and accordingly requests entry of summary judgment dismissing Count 2 of the notice of opposition.
Neither party contends that there are any genuinely disputed facts requiring resolution at trial. Rather, each party contends that the evidence of record establishes its entitlement to judgment as a matter of law. That evidence is as follows.
The Evidence of Record.
Applicant has submitted the declaration of its principal, Kurt D. Bruhl. [FN4] Mr. Bruhl states that some years ago he conceived of SMUGGLER as a trademark for tobacco products, and to that end registered the mark "internationally," including in the United States in 1976. [FN5] In 1981, Mr. Bruhl entered into a license arrangement with Assens Tobaksfabrik, a Danish company, under which the latter manufactured and sold tobacco bearing applicant's SMUGGLER mark and paid royalties on such sales to applicant. The licensed sales under the mark included the Danish licensee's exportation of tobacco from Denmark to the United States, where it was offered for sale under the SMUGGLER mark by Pearl Tobacco Company of North Carolina. (The duration and quantity of such export sales to the United States are not apparent from Mr. Bruhl's declaration.)
The Danish licensee ceased operations at some unidentified time after 1981. Mr. Bruhl states that he subsequently redesigned the SMUGGLER mark into the form in which it is depicted in the application drawing, i.e., the word SMUGGLER in stylized script together with the sailing ship design element. Mr. Bruhl formed applicant corporation, and developed and launched a business plan and "international licensing program." Pursuant to that plan, applicant has registered or applied to register the mark in thirty-three countries, including the United States application involved in this proceeding.
Applicant's implementation of its business plan also consisted of applicant's attempts to interest tobacco firms in taking a license to use the SMUGGLER AND DESIGN trademark. To that end, Mr. Bruhl states that applicant has, inter alia: contacted the U.S. and Foreign Commercial Service of the United States Department of Commerce in Vienna, Austria; offered a license to B.A.T. Industries of Middlesex, England; offered a license to the Austria Tabakwerke AG of Vienna, Austria; offered a license to Brown & Williamson Tobacco Corporation of Louisville, Kentucky, U.S.A.; offered a license to Philip Morris GmbH of Munich, Germany; offered a license to R.J. Reynolds Tobacco GmbH of Cologne, Germany; offered a license to R.I.T.P. of Amsterdam, The Netherlands; and offered a license to Benson & Hedges, Ltd. of London, England.
*3 Finally, Mr. Bruhl states in his declaration that, at the time applicant applied to register the SMUGGLER AND DESIGN trademark in the United States, applicant intended in good faith to use, via an authorized licensee, the SMUGGLER AND DESIGN trademark in commerce which may lawfully be regulated by Congress, and that applicant still so intends, in good faith.
Mr. Bruhl's declaration is accompanied by the following documentary evidence: a copy of the above-referenced U.S. Reg. No. 1,039,376 for the SMUGGLER mark; a copy of the packaging for tobacco imported from Mr. Bruhl's former Danish licensee by Pearl Tobacco Company and offered for sale under the SMUGGLER mark; and copies of applicant's letters to the above-identified tobacco companies in Europe and the United States, which contain applicant's offers to license the mark. These letters are dated between August 19, 1992 and November 10, 1992.
The record also contains certain documents produced by applicant in discovery and submitted by opposer in support of its motion for summary judgment. These documents, which were not included in applicant's summary judgment submissions, include a copy of a follow-up letter dated November 16, 1992 from applicant to Brown & Williamson Tobacco Corporation requesting the latter's reply to applicant's original October 12, 1992 letter; a copy of Brown & Williamson's reply, dated December 10, 1992, by which Brown & Williamson declined applicant's offer of a license; and a copy of a letter, dated August 17, 1992 and written in what appears to be German, from the U.S. Department of Commerce's U.S. & Foreign Commercial Service in Vienna, presumably in reply to applicant's prior contact. A translation of this letter has not been provided.
The parties' arguments.
As noted above, opposer has not disputed the factual accuracy of applicant's account of its activities, but rather contends that those undisputed facts, even if true, fail as a matter of law to establish that applicant had a bona fide intention to use the applied-for mark in commerce on tobacco. Opposer argues that the legislative history of the Lanham Act requires that the determination as to whether an applicant has a bona fide intention to use the mark in commerce as of the application filing date must be an objective determination based on all the circumstances. Opposer further argues, citing the Board's decision in Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d 1503 (TTAB 1993), that lack of a bona fide intent to use a mark is a basis for sustaining an opposition, and that an opposer may prove that an applicant lacks the requisite bona fide intention to use the mark in commerce by establishing that the applicant does not possess and cannot produce at trial any documentary evidence supporting the applicant's claimed intention to use a mark. In the present case, opposer contends, applicant has presented no documentary evidence which is sufficient to constitute an objective demonstration of an intent to use its mark in connection with tobacco.
*4 Opposer argues that applicant's efforts to license its mark outside the United States and to obtain non-U.S. licensees are irrelevant to the issue of applicant's bona fide intention to use the mark in commerce which may be regulated by Congress, and that applicant's evidence of such efforts is insufficient, as a matter of law, to establish applicant's bona fide intention to use the mark "in commerce" under the Lanham Act. Opposer also argues that applicant's evidence of the licensing activities of its predecessor with respect to the previously registered SMUGGLER mark is irrelevant to the issue of applicant's bona fide intention to use the mark for which it seeks registration in the present application, i.e., SMUGGLER and ship design.
Opposer contends that, given the irrelevance of applicant's evidence (i) of its activities directed to non-U.S. licensees and (ii) pertaining to its previously registered mark, the only evidence which is of any possible relevance in this case is the correspondence between applicant and Brown & Williamson Tobacco Corporation, which took place in October, November and December of 1992. Opposer argues that applicant's evidence as to this correspondence fails, as a matter of law, to constitute a sufficient objective demonstration of applicant's claimed bona fide intention to use the mark in commerce on tobacco. Opposer offers two arguments in support of this contention.
First, opposer contends that the October 12, 1992 letter from applicant to Brown & Williamson, if it offered any license of the mark at all, offered a license of the mark only for use on cigarettes, not on pipe tobacco. Opposer bases this argument on the fact that applicant enclosed with its letter to Brown & Williamson a sample label, displaying the mark, for use on a cigarette package, but did not enclose a sample label showing how the mark might be used on packaging for pipe tobacco. Opposer concludes that applicant's October 12, 1992 letter to Brown & Williamson, even if it constitutes evidence of applicant's bona fide intention to use the mark in commerce on cigarettes (a point opposer does not concede), does not establish applicant's bona fide intention to use the mark in commerce on tobacco.
Opposer next argues that the correspondence between applicant and Brown & Williamson in October, November and December of 1992 is not evidence of applicant's bona fide intention, as of the application filing date, to use the mark in commerce because the correspondence did not occur until approximately nine months after applicant filed its U.S. application on January 23, 1992. Opposer contends that this nine-month lapse of time between the filing of the application and the undertaking of the correspondence negates any evidentiary value the correspondence otherwise might have had on the issue of whether applicant, at the time the application was filed, possessed the requisite bona fide intention.
In short, opposer argues that the evidence of record does not satisfy the Lanham Act's requirement of an objective demonstration of applicant's bona fide intention to use the applied-for mark in commerce on the "tobacco" identified in the application. Opposer contends that the documentary evidence applicant relies upon is either irrelevant (i.e., the evidence pertaining to applicant's efforts to obtain non-U.S. licensees and the evidence pertaining to applicant's predecessor's activities with respect to applicant's other SMUGGLER mark) or is insufficient as a matter of law to establish applicant's bona fide intention (i.e., the Brown & Williamson correspondence).
*5 In response to opposer's summary judgment arguments and in support of its own motion for summary judgment, applicant argues that the evidence of record establishes as a matter of law applicant's bona fide intention to use the mark in commerce on tobacco as of the application filing date. First, applicant contends that the Board can and should consider applicant's documentary evidence pertaining to applicant's efforts to obtain a European licensee, and pertaining to applicant's predecessor's licensing activities and experience with respect to applicant's previous SMUGGLER mark. According to applicant, that evidence has a bearing on applicant's formulation and execution of its business plan and international (including U.S.) licensing program for the mark, and thus is relevant to the determination of applicant's bona fide intention in this case.
Applicant also relies on the evidence of its correspondence with the Brown and Williamson Tobacco Corporation, arguing that opposer's characterization of this evidence as "inadequate" is without legal basis. Applicant contends that the statute does not define any particular quantum of evidence which must be presented to make the required objective demonstration of applicant's bona fide intention.
Finally, applicant contends that the Commodore Electronics decision, relied on by opposer, is inapposite to the present case because, unlike the applicant in that case, which had failed to produce any documentary evidence demonstrating its bona fide intention to use its mark, applicant in this case has presented such documentary evidence.
Under the Trademark Law Revision Act of 1988 ("TLRA"), an application filed under Section 44(d) claiming priority based on a foreign trademark application must conform "as nearly as practicable to the requirements of this Act, including a statement that the applicant has a bona fide intention to use the mark in commerce." 15 U.S.C. Section 1126(d)(2). Section 44's reference to "bona fide intention to use the mark in commerce" is paralleled in Section 1(b) of the Act, 15 U.S.C. Section 1051(b), which requires an "intent-to-use" applicant, whether foreign or domestic, to have "a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce ..." In determining whether an applicant under Section 44 possesses the requisite bona fide intention to use the mark in commerce, the Board will employ the analysis suggested or required by the legislative history and case law pertaining to Section 1(b) applications. [FN6]
Congress, in drafting the TLRA, purposely omitted a statutory definition of the term "bona fide" as used in the phrase "bona fide intention," in the interest of preserving "the flexibility which is vital to the proper operation of the trademark registration system." S.Rep. at 24. However, the legislative history of the TLRA provides that "[i]n connection with this bill, 'bona fide' should be read to mean a fair, objective determination of the applicant's intent based on all the circumstances," and that " ... applicant's bona fide intention must reflect the good-faith circumstances surrounding the intended use." Id.
*6 Similarly, the House report, H.Rep. No. 100-1028, 100th Cong.2d Sess. (1988) (hereinafter "H.Rep.") provides as follows:
By permitting applicants to seek protection of their marks through an "intent to use" system, there should be no need for "token use" of a mark simply to provide a basis for an application. The use of the term "bona fide" is meant to eliminate such "token use," and to require, based on an objective view of the circumstances, a good faith intention to eventually use the mark in a real and legitimate commercial sense. Obviously, what is real and legitimate will vary depending on the practices of the industry involved, and should be determined based on the standards of that particular industry.
H.Rep. at 8-9.
Thus, the determination of whether an applicant has a bona fide intention to use the mark in commerce is to be a fair, objective determination based on all the circumstances. That is, applicant's mere statement of subjective intention, without more, would be insufficient to establish applicant's bona fide intention to use the mark in commerce. [FN7]
However, while the determination of whether the applicant has the requisite bona fide intention is to be an objective determination, neither the statute nor the legislative history of the TLRA specifies the particular type or quantum of objective evidence that an applicant must produce to corroborate or defend its claimed bona fide intention to use the mark in commerce. In contrast, the legislative history of the TLRA provides several specific examples of objective circumstances which, if proven, "may cast doubt on the bona fide nature of the intent or even disprove it entirely." S.Rep. at 23.
For example, the applicant may have filed numerous intent-to-use applications to register the same mark for many more new products than are contemplated, numerous intent-to-use applications for a variety of desirable trademarks intended to be used on [a] single new product, numerous intent-to-use applications to register marks consisting of or incorporating descriptive terms relating to a contemplated new product, numerous intent-to-use applications to replace applications which have lapsed because no timely declaration of use has been filed, an excessive number of intent-to-use applications to register marks which ultimately were not actually used, an excessive number of intent-to-use applications in relation to the number of products the applicant is likely to introduce under the applied-for marks during the pendency of the applications, or applications unreasonably lacking in specificity in describing the proposed goods. Other circumstances may also indicate the absence of genuine bona fide intent to actually use the mark.
S.Rep. at 23-24.
In this case, after reviewing the evidence and arguments submitted by the parties on summary judgment, we find that no genuine issue of material fact exists and that, as a matter of law, applicant has shown that it had the requisite bona fide intention to use its mark in commerce on tobacco as of the application filing date. Applicant's evidence pertaining to the formulation and implementation of its business plan and licensing program constitutes credible, objective corroboration of its statement in the application that it had a bona fide intention to use the mark in commerce on tobacco.
*7 First, applicant's claimed bona fide intention to use its mark in commerce on tobacco is corroborated by applicant's correspondence with Brown & Williamson Tobacco Corporation. We are not persuaded by opposer's arguments to the contrary. Applicant's October 12, 1992 letter specifically mentions pipe tobacco as one of the products upon which applicant's mark might be used. Therefore, the fact that applicant may have included a sample label for a cigarette package, and not for a pipe tobacco package, is not dispositive.
Furthermore, we find that this correspondence, which occurred in October-December 1992, was sufficiently contemporaneous to the application filing date in January 1992 to serve as corroboration of the applicant's declaration in the application of a bona fide intention to use the mark in commerce. Neither the statute nor the Board's decision in Commodore Electronics expressly imposes any specific requirement as to the contemporaneous of an applicant's documentary evidence corroborating its claim of bona fide intention. Rather, the focus is on the entirety of the circumstances, as revealed by the evidence of record. In this case, we find that the circumstances support applicant's claim of bona fide intention.
Applicant's claim of bona fide intention to use its mark in commerce is also corroborated, in the circumstances of this case, by applicant's evidence regarding its predecessor's activities and experience in licensing its prior mark, and also its evidence regarding its activities directed to non-U.S. tobacco companies.
With respect to the activities of applicant's predecessor, the evidence shows that applicant's principal had succeeded in marketing tobacco in the United States by locating a non-U.S. licensee (the Danish tobacco company Assens Tobaksfabrik), which exported tobacco to the United States under the previous SMUGGLER mark. This evidence is relevant because it establishes that applicant's principal was engaged in the tobacco marketing business, including the export of tobacco to the United States under the previous SMUGGLER mark. When viewed in the context of this prior experience and success in the relevant industry, we find that applicant's efforts to obtain a licensee for the new SMUGGLER mark are consistent with and corroborative of applicant's claimed bona fide intention to use the new mark in commerce.
Similarly, applicant's claim of bona fide intention is corroborated by its attempts to locate a non-U.S. licensee who could export tobacco to the United States under the new SMUGGLER mark, especially in view of applicant's principal's prior successful use of that same strategy in connection with the previous SMUGGLER mark. In the context of that prior experience, the fact that these prospective licensees were not domiciled in the United States does not detract from applicant's claim of bona fide intention. Additionally in this regard, we note that applicant had contacted an agency of the U.S. Department of Commerce in Vienna, Austria, and that several of the European tobacco companies to whom applicant offered licenses appear to be European affiliates of U.S. tobacco companies, i.e., Philip Morris GmbH and R.J. Reynolds Tobacco GmbH.
*8 In short, the undisputed documentary evidence of record in this case is sufficient to establish as a matter of law that applicant possessed the requisite bona fide intention to use its mark in commerce on tobacco. Opposer has not presented, and presumably cannot present at trial, evidence of any other circumstances which might tend to cast doubt on or disprove applicant's claim of bona fide intention. [FN8]
Because there are no genuine issues of material fact as to the circumstances surrounding applicant's claimed bona fide intention, and because the evidence of record as to those circumstances establishes applicant's bona fide intention as a matter of law, we deny opposer's motion for summary judgment on its second ground of opposition, and grant applicant's cross-motion for summary judgment thereon. Paragraphs 8, 9 and 10 of the notice of opposition are hereby stricken.
Additionally, the Board hereby strikes paragraphs 11-13 of the notice of opposition. See Fed.R.Civ.P. 12(f). These paragraphs set forth opposer's third ground of opposition, namely, that applicant is not entitled to registration because it had not used the mark anywhere in the world prior to the application filing date. This pleading is insufficient as a matter of law. An applicant under Section 44 of the Lanham Act need not have used the applied-for mark anywhere in the world prior to filing. Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984). See generally J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, at Section 29.04 (3d Ed.1994). Thus, applicant's alleged nonuse of the mark prior to the application filing date, even if established, is immaterial to applicant's right to a registration under Lanham Act Section 44. Opposer's allegations of applicant's nonuse do not constitute a ground of opposition to registration of applicant's mark, and accordingly are stricken.
In summary, IT IS HEREBY ORDERED THAT: [FN9]
1. Opposer's motion for summary judgment is denied.
2. Applicant's motion for summary judgment as to opposer's second ground of opposition is granted.
3. Opposer's second and third grounds of opposition (paragraphs 8-13 of the notice of opposition) are dismissed.
4. Testimony periods for the trial of opposer's Section 2(d) ground of opposition, beginning with opposer's testimony period, are reset as indicated in the accompanying trial order.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/239,616, filed January 23, 1992. The application was originally filed in Class 25 and Class 34, but Class 25 was deleted during ex parte prosecution.
FN2. Austrian application No. 4661/90, originally filed for Class 25 on September 12, 1990 and issued in Class 25 as Reg. No. 134,757 on February 22, 1991. Applicant filed a request on October 10, 1991 to "extend" the registration to Class 34, and the extension took effect on January 9, 1992.
FN3. These three grounds of opposition are sometimes hereinafter referred to as Counts 1, 2 and 3 of the notice of opposition, respectively.
FN4. This declaration is not supported by a Section 2.20 verification, nor by affidavit oath. Opposer, however, has not raised any objection to the declaration on this ground, nor has opposer disputed the factual accuracy of the statements contained in the declaration.
FN5. Reg. No. 1,039,376, issued under Section 44 on May 11, 1976. Section 8 affidavit accepted. PTO assignment records indicate that applicant's principal Kurt D. Bruhl is the owner of record of this registration, although the applicant corporation claimed ownership of the registration during ex parte prosecution of the application.
FN6. See 15 U.S.C. Section 1126(d)(2); see also S.Rep. No. 100-515, 100th Cong.2d Sess. at 43 (1988) (hereinafter "S.Rep.") ("Those who seek registration for their marks under Section 44 should be required to meet the same requirements for applying to register as U.S. individuals and companies filing on the basis of intent-to-use.")
FN7. Thus, in Commodore Electronics, supra, the Board concluded that the opposer therein would be entitled to prevail on its claim that the applicant lacked the bona fide intention to use its mark in commerce required by Section 1(b) if the opposer were to plead and prove that the applicant is unable to present any evidence, documentary or otherwise, supportive of or bearing on the applicant's claimed bona fide intention to use the mark in commerce.
FN8. For examples of such circumstances, see the excerpt from pp. 23-24 of the Senate Report, quoted above at pages 14-15.
FN9. This decision is interlocutory in nature. Appeal may be taken within two months after the entry of a final decision in the case. See Copelands' Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12 U.S.P.Q.2d 1562 (Fed.Cir.1989).