Kelly Services, Inc. v. Creative Harbor, LLC
846 F.3d 857
| 6th Cir. | 2017Background
- Creative Harbor (startup) filed two §1(b) intent-to-use trademark applications for WORKWIRE on Feb 19, 2014 listing 36 goods/services; Kelly Services launched a competing WorkWire app Feb 19–20, 2014 and sued after receiving a cease-and-desist.
- Creative Harbor’s CEO Jurgensen testified (30(b)(6) deposition) that many listed goods/services were included to “protect” the brand or for future exploration, and that Creative Harbor did not then intend to use the mark for certain listed items (e.g., computer game software, professional credentialing services, employee relations services).
- Kelly Services challenged the ITU applications for lack of bona fide intent under 15 U.S.C. §1051(b); the district court granted summary judgment to Kelly, finding lack of bona fide intent as to some items and voiding the applications in their entirety.
- On appeal Creative Harbor argued (1) the district court erred in finding lack of bona fide intent for some items, and (2) even if lack of intent existed for some items, the entire applications should not have been voided.
- The Sixth Circuit affirmed that Creative Harbor lacked bona fide intent as to some listed goods/services (based largely on Jurgensen’s deposition and absence of documentary evidence for those items), vacated the all-or-nothing remedy, and remanded for the district court to excise improper items rather than void the whole applications.
Issues
| Issue | Kelly Services’ Argument | Creative Harbor’s Argument | Held |
|---|---|---|---|
| Whether Creative Harbor had a bona fide intent to use WORKWIRE for each listed good/service under §1(b) | Jurgensen’s deposition admissions and lack of documentary evidence show Creative Harbor lacked firm intent as to some listed items | The totality of Creative Harbor’s objective evidence (wireframes, domain, developer agreement, business plan, press release, trademark search) shows bona fide intent for all listed items | Court: Kelly met initial burden; Creative Harbor proved bona fide intent for some items but not for others — summary judgment for lack of bona fide intent as to at least several goods/services affirmed |
| Whether the district court could consider Jurgensen’s deposition as binding evidence | Deposition of CEO as Rule 30(b)(6) designee is admissible and binding on the corporate party | (Argued on appeal) Deposition was inadmissible hearsay and should not be used to bind Creative Harbor | Held: Deposition admissible under Fed. R. Civ. P. 32(a)(3)/30(b)(6); company bound by its deponent; argument waived below in any event |
| Proper remedy when ITU applicant lacks bona fide intent for some, but not all, listed goods/services | District court (and Kelly) read TTAB precedent to require voiding entire application unless applicant deletes challenged items before substantial litigation | Applicant may cure by deleting or the tribunal/district court may excise improper items and allow remainder to proceed | Held: Voidance of entire ITU application was error; absent fraud/egregious conduct, court should excise goods/services lacking bona fide intent and allow the rest to proceed (Grand Canyon approach governs); remand to determine which items to delete |
| Whether appellate court should itself excise offending items or remand for district-court factfinding | Kelly sought upholding district court’s full voiding; Creative Harbor asked appellate court to excise items favorable to it | Creative Harbor asked court to excise and save application without remand | Held: Remand required—district court must identify individually which of the 36 items lack objective evidence of bona fide intent and excise them; appellate court vacated judgment and remanded for further proceedings |
Key Cases Cited
- M.Z. Berger & Co., Inc. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015) (bona fide intent requires objective, demonstrable intent; evidentiary bar not high but must be more than subjective belief)
- Aktieselskabet AF 21. Nov. 2001 v. Fame Jeans Inc., 525 F.3d 8 (D.C. Cir. 2008) (lack of bona fide intent is a proper ground to oppose an ITU application)
- Anderson v. Liberty Lobby, 477 U.S. 242 (U.S. 1986) (summary judgment standard; genuine issue of material fact required to defeat summary judgment)
- Coach, Inc. v. Goodfellow, 717 F.3d 498 (6th Cir. 2013) (standard of review for summary judgment affirmed)
- Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 78 U.S.P.Q.2d 1696 (T.T.A.B. 2006) (TTAB: where mark used for some listed services, applicant may cure by amending/deleting overbroad items rather than voiding entire application)