IP Law Daily Application for MIRACLE ON 35th STREET mark used with clothing refused
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Wednesday, April 10, 2019

Application for MIRACLE ON 35th STREET mark used with clothing refused

By Brian Craig, J.D.

The Board found no evidence that the applicant has taken steps to manufacture or market the goods to satisfy the bona fide intent to use requirement.

Concluding that a trademark applicant seeking to register the mark MIRACLE ON 35th STREET for clothing did not submit any evidence that he engaged in business activities to manufacture or market goods contemporaneous with his filing, the Trademark Trial and Appeal Board has refused registration for failure to meet the bona fide intent to use requirement. In the precedential decision, the Board also found that future plans to launch a business—once the fan base for the Chicago White Sox, with its baseball stadium located on 35th Street in Chicago, has something to cheer about to make marketing efforts worthwhile—failed the bona bide intent to use requirement with an intention to use the mark that is firm and demonstrable (A&H Sportswear Co., Inc. v. Yedor, March 29, 2019, by the Board).

Applicant William W. Yedor sought to register the standard character mark MIRACLE ON 35th STREET for "paper goods and printed matter, namely, posters, photographs, lithographs, post cards" in International Class 16, and "clothing, namely, T-shirts, sweatshirts, caps, jackets" in International Class 25. A&H Sportswear Co., Inc. filed a notice of opposition on the grounds of likelihood of confusion and dilution by blurring. A&H Sportswear owns 15 registrations for marks that include the word MIRACLE, each for apparel goods.

Leave to amend. The Board first examined whether A&H Sportswear should be granted leave to amend it notice of opposition to add a claim that the applicant had no bona fide intent to use the involved mark in commerce on or in connection with the identified goods when he filed the involved application. A&H Sportswear learned from discovery responses that the applicant has no history of manufacturing, selling, or marketing the identified goods, has taken no steps to manufacture or market the goods, has not identified any potential customers, and has no documentation of advertising, promotional, business, or marketing plans. There is nothing in the record suggesting that A&H Sportswear unreasonably delayed in moving to amend only six weeks after receiving the applicant’s written discovery responses. The applicant failed to introduce evidence demonstrating that it would be prejudiced by the delay, and no prejudice would seem likely given that the information and documents through which the applicant may defend the claim are likely to be in his own possession and control. Accordingly, the Board granted the motion to leave to amend the notice of opposition.

Bona fide intent to use. After concluding thatA&H Sportswear has standing, the Board then considered whether the applicant satisfied the bona fide intent to use requirement for registration. Whether an applicant has a bona fide intention to use the mark in commerce is an objective determination based on the totality of the circumstances. The evidentiary bar for showing bona fide intent to use is not high, but more is required than a mere subjective belief. The objective evidence must indicate an intention to use the mark that is firm and demonstrable.

Here, the only document that the applicant produced in discovery was an image from11 years before the filing date of his application, an image which he identifiedas a "prototype T-shirt."Given the 11-year time span and the absence of record evidence of any lateractivities evidencing the applicant’s use or preparation to use its mark, the Board concluded thatthe use of the applicant’s mark on his T-shirt in 2005 was not sufficientlycontemporaneous with the February 26, 2016, filing date to be probative of the applicant’sbona fide intent to use the mark when the involved application was filed. The applicant did not submit anything to show that he engaged in any activities even somewhat contemporaneous with the filing date. The Board rejected the applicant’s allegation that he planned to launch this business in earnest using the existing design (among others) and existing website platform once the White Sox fan base has something to cheer about to make marketing efforts worthwhile and successful. The Board found that the mere hope that an alleged condition precedent to using his mark—the Chicago White Sox winning the World Series—would occur someday does not satisfy the bona fide intent to use requirement. Because the applicant failed to establish that a genuine dispute of material fact existed as to whether the applicant had the requisite bona fide intent to use his mark on the identified goods as of that filing date, the Board granted A&H Sportswear’s motion for summary judgment to refuse registration of the mark.

This case is Opposition No. 91235843.

Attorneys: Douglas A. Rettew (Finnegan Henderson Farabow Garrett & Dunner LLP) for A&H Sportswear Co., Inc. William W. Yedor, pro se.

Companies: A&H Sportswear Co., Inc.

MainStory: TopStory Trademark USPTO

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