TTAB opinion about scope of bona fide intent to use challenges (some or all of goods?)

The TTABlog recently pointed out a precedential TTAB decision that could be read to throw doubt on the scope of any claim that the applicant/registrant lacked a bona fide intent to use the mark in connection a class of goods in which the applicant lists several specific goods. I thought it was settled that lack of BFI to use on some specific goods didn’t sink the other goods listed, but maybe it’s not settled after all.

The decision is Spirits Int’l, B.V. v. S.S. Tataris Zetin, Opp. No. 91163779 (July 6, 2011). You should read the TTABlog’s take on the decision. My own reading of the opinion – which is certainly less than clear on this point -- is that it does not create a categorical rule that lack of BFI for any good in the class knocks out the whole class. The opinion states that the lack of BFI count was pleaded as to the two classes in their entireties. The opinion also notes that there was also a more specific allegation that there was no BFI as to any alcoholic beverages listed among the non-alcoholic beverage goods in the application.  From these statements I infer that the specific allegation that there was no BFI as to alcoholic beverages was not a limitation on the scope of the claim, but simply a factual allegation that the opposer pleaded in support of its broader "whole class" claim.

At trial, the opposer introduced evidence in the form of lack of any documents as to some of the goods (the alcoholic beverages). This was sufficient to shift the burden of production the applicant, who then submitted nothing. Thus, when the applicant failed to put in any evidence whatsoever and failed to file a merits brief, the claim adjudicated was the "whole class" claim. I infer from this that if the applicant had submitted sufficient evidence of BFI as to non-alcoholic goods, then the opposition would have been only partially sustained, and only the alcoholic products would have been struck.

Still, this ruling is unclear enough that it could be argued to support a more categorical rule. An applicant in this position should certainly consider (as noted in the opinion) deleting specific goods as to which BFI is lacking or questionable so as not to endanger registration as to the other goods where BFI is provable, at least until the TTAB clarifies its position on this.

Thanks to TTABlog for highlighting the issue.

Significant precedential TTAB decision concerning fraudulent intent and "advice of counsel"

I don’t usually report on TTAB decisions, but this one looks significant. It concerns “advice of counsel” and proof of fraudulent intent in the wake of In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009).

In M.C.I. Foods, Inc. v. Bunte, Cancellation No. 92046056 (TTAB Sept. 13, 2010), Bunte cross-petitioned to cancel MCI’s registration for fraud. MCI’s registration listed many types of Mexican foods (including tortilla chips), but MCI never used it for tortilla chips. MCI’s president testified that he made a list of goods he wanted to have on the application (including items he knew MCI hadn't used the mark on, like tortilla chips), but testified that the list “was discussed with counsel.” Bunte’s attorney asked no further questions about the discussions with counsel.

Based on the evidence that MCI provided the list to counsel and discussed it with counsel, the TTAB found that MCI did not intend to deceive the PTO. The TTAB qualified its ruling by noting that it was not holding that merely asserting “advice of counsel” creates a per se defense to fraudulent intent. Rather, it faulted Bunte for not following up and obtaining testimony concerning what counsel’s actual advice, if any, was. So, evidence that counsel’s advice was sought can be exonerating if there is no further evidence that counsel’s advice (or lack thereof) undercut this evidence of good faith. In other words, evidence that the accused party sought the “advice of counsel” creates a presumption of good faith, and the presumption stands unless outweighed by contrary evidence.

NB: The TTAB did not discuss the necessarily-implicated issue of whether an accused party waives the attorney-client privilege merely by invoking or referring to the obtaining of counsel’s advice.

Absent fraud, the TTAB denied cancellation, instead restricting MCI’s registration to the items that it actually used the mark on.