M.Z. Berger & Co., Inc. v. Swatch Ag
787 F.3d 1368
| Fed. Cir. | 2015Background
- Berger appeals a Board decision sustaining a Swatch opposition based on lack of bona fide intent to use the mark iWatch under 15 U.S.C. § 1051(b)(1).
- The PTO initially approved publication of Berger’s intent-to-use application for iWatch for watches, clocks, and related goods in multiple categories.
- Swatch filed an opposition asserting lack of bona fide intent to use the mark in commerce; the Board separated analysis by three categories of goods.
- The Board credited Berger’s Rule 30(b)(6) witness and found conflicting testimony, but ultimately concluded documentary and testimonial evidence failed to show firm intent to use iWatch.
- Berger challenged the Board’s application of the “bona fide intent” standard and its factual determinations; the Federal Circuit affirmed the Board’s ruling.
- TLRA allows intent-to-use filings but requires eventual use in commerce; the court held the lack of bona fide intent is a valid ground to challenge an intent-to-use filing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether lack of bona fide intent is a valid statutory ground to challenge an intent-to-use application | Berger: claim is improper or not sufficiently proven | Board: lack of bona fide intent is a proper ground under §1051(b)(1) | Yes; proper statutory ground |
| What standard applies to ‘bona fide intent’ under §1051(b)(1) | Berger: minimal or subjective standard suffices | Board: objective, totality-of-circumstances approach applies | Objective, totality-of-circumstances standard |
| Whether substantial evidence supports the Board’s finding of lack of bona fide intent | Berger: some objective evidence supports intent | Board: documentary and testimonial evidence overall does not show firm intent | Yes; substantial evidence supports Board |
| Whether the Board misapplied standards by privileging prosecution-related materials as evidence of intent | Berger: documents show ongoing product development | Board: documents were prosecution-driven and not indicative of genuine intent | No; proper consideration of totality of evidence |
| Whether the Board’s conclusions were consistent with PTO practice and statutory framework | Berger: Board over-penalized lack of steps to promote the mark | Board applied correct standard and considered all circumstances | Yes; Board did not err |
Key Cases Cited
- Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024 (C.C.P.A. 1982) (bona fide intent assessed on objective basis; statutory grounds for opposition)
- Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009) (appropriate interpretation of use and intent-to-use; tokens vs bona fide use)
- Aktieselskabet AF 21. Nov. v. Fame Jeans Inc., 525 F.3d 8 (D.C. Cir. 2008) (bona fide intent measured by objective factors; totality of circumstances)