The opinion
THIS OPINION
IS A PRECEDENT OF THE
T.T.A.B.
Mailed: 12/2/09
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Research In Motion Limited
v.
NBOR Corporation
_____
Opposition No. 91179284
to application Serial No. 77090059
filed on January 24, 2007
_____
William R. Towns and Jeffrey J. Morgan of Novak Druce &
Quigg for Research In Motion Limited.
Michael James Cronen of Zimmerman & Cronen for NBOR
Corporation.
______
Before Seeherman, Quinn and Drost, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
NBOR Corporation filed an intent-to-use application to
register the mark BLACK MAIL for “computer software for
facilitating interactive communication, namely, chat,
electronic mail, voice, instant messages, text transfer,
multi-media transfer, live collaboration, motion pictures,
and sound over a global computer information network and
other networks” in Class 9.
Opposition No. 91179284
Research In Motion Limited opposed registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark, when applied to
applicant’s goods, so resembles opposer’s previously used,
registered and famous BLACKBERRY marks for a variety of
goods and services in the wireless telecommunications
industry, as to be likely to cause confusion. Opposer, in
an amended opposition, added a claim that applicant lacked a
bona fide intent to use the mark in commerce when the
application was filed.
Applicant, in its answers, denied the salient
allegations in the original and amended notices of
opposition.1
Before setting forth the record upon which we decided
this case, several evidentiary objections require our
attention. Applicant raised the objections in its brief on
the case; opposer did not file a reply brief, and we do not
otherwise have the benefit of any response by opposer to the
objections. Notwithstanding the absence of a response, we
1
Applicant attached an exhibit to its answer to the amended
notice of opposition. The exhibit is a TESS printout listing
third-party registrations of marks that include “BLACK” for goods
in Class 9. Except in limited circumstances, which are not
present here, an exhibit to a pleading is not evidence on behalf
of the party to whose pleading the exhibit is attached unless
identified and introduced in evidence as an exhibit during the
period for the taking of testimony. Trademark Rule 2.122(c); and
TBMP §317 (2d ed. rev. 2004). Accordingly, this exhibit is not
part of the record.
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Opposition No. 91179284
will take up the objections on their merits, rather than
viewing opposer’s silence as a concession.
Applicant objected to opposer’s introduction of its
pleaded registrations by way of a notice of reliance (“#1”
filed on June 13, 2008) on printouts of the registrations
obtained from the USPTO’s TARR (Trademark Application and
Registration Retrieval) system. Applicant contends that the
TARR copies of the registrations are not in compliance with
Trademark Rule 2.122(d) because they are not status and
title copies prepared by the Office.
Trademark Rule 2.122(d)(1) regarding the introduction
of pleaded registrations in inter partes proceedings was
amended over two years ago. The rule, in pertinent part,
now reads:
A registration of the opposer or
petitioner pleaded in an opposition or
petition to cancel will be received in
evidence and made part of the record if
the opposition or petition is
accompanied by an original or photocopy
of the registration prepared and issued
by the United States Patent and
Trademark Office showing both the
current status of and current title to
the registration, or by a current
printout of information from the
electronic database records of the USPTO
showing the current status and title of
the registration. (emphasis added)
See Miscellaneous Changes to Trademark Trial and Appeal
Board Rules, 72 Fed.Reg. 42,242 (Aug. 1, 2007). Of
particular significance in the present case is that the
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Opposition No. 91179284
amendment to Trademark Rule 2.122(d)(1) only applies to
proceedings commenced on or after August 31, 2007. Id. at
42,242.
The present notice of opposition was filed and
commenced on August 31, 2007. See Trademark Rule 2.101(a);
and TBMP §302 (2d ed. rev. 2004). Thus, the amended rule
applies to this proceeding. To the extent that there may
appear to be a discrepancy between Trademark Rule
2.122(d)(1) and Trademark Rule 2.122(d)(2) in that the
former allows for proof of a pleaded registration by the
submission of USPTO records with a pleading while the latter
appears to preclude use of such records during trial, there
is no sound basis for the distinction. We view the Office’s
amendment of Trademark Rule 2.122(d)(1) as an attempt to
expand the possible means for proving a pleaded
registration, not as intended to make proof of a pleaded
registration more difficult at trial than during pleading.
Trademark Rule 2.122(d)(1) was in need of amendment because
of an outdated requirement for filing of duplicate copies of
materials offered to prove a pleaded registration. 72
Fed.Reg. at 42,249. The inclusion in the amended rule of an
option to prove a pleaded registration by relying on USPTO
records was not necessary to effect the deletion of the
previous requirement for duplicate copies and can therefore
only be taken as an indication that the Office meant to
4
Opposition No. 91179284
liberalize the means for proving a pleaded registration.
Accordingly, applicant’s objection is overruled, and
opposer’s pleaded registrations are properly of record.2
Applicant also objected to a portion of opposer’s
notice of reliance (“#3” filed on June 13, 2008) on certain
documents. Document Nos. PP 00001-PP 000075, and PP
0000488-PP 0000492 are admissible as printed publications
pursuant to Trademark Rule 2.122(e). The fact that some of
the excerpts of the printed publications include
advertisements for opposer’s goods and services does not
disqualify them as proper subject matter for a notice of
reliance; these documents are not promotional materials per
se, but rather are advertisements in printed publications
that are available to the general public or in general
circulation. See Gravel Cologne, Inc. v. Lawrence Palmer,
Inc., 469 F.2d 1397, 176 USPQ 123, 123 (CCPA 1972);
Volkswagenwerk Aktiengesellschaft v. Ridewell Corp., 201
USPQ 410 (TTAB 1979); and Wagner Electric Corp. v. Raygo
Wagner, Inc., 192 USPQ 33, 36 n.10 (TTAB 1976). The same
result pertains to the unsolicited articles appearing in
printed publications that mention opposer’s mark and the
2
A plaintiff relying on a TARR printout should be certain that
the printout accurately reflects current title in the plaintiff.
See generally TMEP §504 (6th ed., rev. 1, October 2009)
(information regarding the automatic updating of the ownership of
trademark applications and registrations in the Trademark
Database, including TARR).
5
Opposition No. 91179284
goods and/or services sold thereunder. We note applicant’s
corresponding hearsay objections. So as to be clear,
although the printed publications are deemed of record, they
merit consideration not for the truth of any matter asserted
(e.g., that opposer’s BLACKBERRY mark is famous), but rather
for only what the documents show on their face.
Applicant’s objection to Document Nos. PP 000076-PP
0000487 in this same notice of reliance is sustained.
Annual reports are not printed publications, and are not
proper subject matter for a notice of reliance. See Jeanne-
Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 59 n.4
(TTAB 1984).
Applicant also objected to Document Nos. OR 000028-OR
0000388 listed in this notice of reliance. These documents
appear to be nothing more than opposer’s file copies of
financial reports purportedly submitted by opposer to the
U.S. Securities and Exchange Commission (SEC). These file
copies do not qualify as official records and, thus, are not
proper subject matter for a notice of reliance. See Hard
Rock Café International (USA) Inc. v. Elsea, 56 USPQ2d 1504,
1508 (TTAB 2000). The term “official records” as used in
Trademark Rule 2.122(e) refers not to a party’s company
business records, but rather to the records of public
offices or agencies, or records kept in the performance of
duty by a public officer. TBMP §704.07 (2d ed. rev. 2004).
6
Opposition No. 91179284
See Conde Nast Publications Inc. v. Vogue Travel, Inc., 205
USPQ 579, 580 n.5 (TTAB 1979) (official records are records
prepared by a public officer).
In view of the above, applicant’s objections to
opposer’s notice of reliance “#3” are sustained in part and
overruled in part.
Applicant objected to the printouts of several
applications, all filed and later abandoned by applicant,
attached to opposer’s notice of reliance (“#5” filed
December 15, 2008). The copies were obtained from the
Office’s Trademark Document Retrieval (TDR) system. As
these copies qualify as official records, they are proper
subject matter for a notice of reliance. See TBMP
§704.03(b)(2) (2d ed. rev. 2004). Accordingly, applicant’s
objection is overruled. We also note applicants’ relevancy
objections to this evidence, and we have kept in mind
applicant’s objections relating to the probative value to be
accorded these documents.
In view of the above, the record consists of the
pleadings; the file of the involved application; copies of
opposer’s pleaded registrations, excerpts of printed
publications, official records, and applicant’s responses to
discovery requests, all introduced by opposer’s notices of
reliance. Applicant neither took testimony nor introduced
7
Opposition No. 91179284
any other evidence. Both parties filed a brief on the
case.3
Standing
Standing is a threshold issue that must be proven by a
plaintiff in every inter partes case. Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999). The purpose
of the standing requirement is to prevent litigation when
there is no real controversy between the parties. Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
As indicated above, opposer properly introduced
printouts from the TARR database records of the USPTO
showing the current status and title of its pleaded
registrations for its BLACKBERRY marks for a variety of
goods and services in the wireless telecommunications field.
The evidence establishes that opposer has a real interest in
the outcome of this proceeding; that is, opposer has a
direct and personal stake in preventing the registration of
applicant’s mark for applicant’s goods. Once the standing
threshold has been crossed, opposer may rely on any legal
ground that negates applicant’s right to the registration it
3
In its brief applicant raises for the first time the defenses
of “laches and estoppel” based on opposer’s failure to oppose
applicant’s two earlier-filed (and now abandoned) applications to
register the same mark as the one involved here. Suffice it to
say that the defenses were neither pleaded nor tried. No
consideration has been given to applicant’s allegations in this
regard.
8
Opposition No. 91179284
seeks. Estate of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB
1991).
Bona Fide Intent
Opposer maintains that applicant lacked a bona fide
intent to use the mark in commerce when it filed the
involved application. Opposer specifically points to
applicant’s discovery responses which indicate the absence
of evidence, documentary or otherwise, to support a bona
fide intent to use at the time of filing. Further, opposer
points out that applicant did not offer any testimony or
evidence regarding its intent. Opposer also relies upon
applicant’s history of filing fifteen other applications,
two of which were for the same mark, BLACK MAIL, that is at
issue herein, that were abandoned for failure to file a
statement of use.
Applicant counters by contending that it has verified
its intent to use “under penalty of perjury” in response to
discovery requests, and that during discovery applicant
disclosed “a number of documents relating to its bona fide
intent to use.” (Brief, p. 8). Applicant also contends
that its decisions relating to prior applications to
register different marks are irrelevant to applicant’s lack
of a bona fide intent with respect to the involved mark.
Trademark Act Section 1(b), 15 U.S.C. §1051(b), states
that “a person who has a bona fide intention, under
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Opposition No. 91179284
circumstances showing the good faith of such person, to use
a trademark in commerce” may apply for registration of the
mark. A determination of whether an applicant has a bona
fide intention to use the mark in commerce is an objective
determination based on all the circumstances. Lane Ltd. v.
Jackson International Trading Co., 33 USPQ2d 1351, 1355
(TTAB 1994). Opposer has the burden of demonstrating by a
preponderance of the evidence that applicant lacked a bona
fide intent to use the mark on the identified goods. The
absence of any documentary evidence on the part of an
applicant regarding such intent constitutes objective proof
that is sufficient to prove that the applicant lacks a bona
fide intention to use its mark in commerce. See Commodore
Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503,
1507 (TTAB 1993). See also Honda Motor Co. v. Winkelmann,
90 USPQ2d 1660 (TTAB 2009); Boston Red Sox Baseball Club LP
v. Sherman, 88 USPQ2d 1581 (TTAB 2008); and L.C. Licensing
Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008).
Opposer has met its burden of demonstrating applicant’s
lack of a bona fide intent to use the mark by showing that
applicant has no documentary evidence regarding such intent.
Applicant indicated the following in its discovery
responses: it has not offered any goods or services for
sale under the involved mark (Interrogatory No. 1(a)); the
mark has not been used and no plans have been made as to how
10
Opposition No. 91179284
the mark may be used (Nos. 1(b) and (d)); there is no
projected date of first use in commerce (No. 1(c)); no
channels of trade have been formulated or planned for the
future (No. 2); the classes of consumers and geographic
areas of sales have not yet been determined (Nos. 3(b) and
(c), and No. 4); applicant has not undertaken any market
studies, surveys, or focus groups (No. 14); and no documents
exist regarding plans for expansion and growth of the
product and service lines under the mark (No. 18).
Generally, applicant indicated that there are no documents
upon which applicant relied in answering the discovery
requests (No. 28).
The present application represents applicant’s third
attempt to register the mark BLACK MAIL for the same or
closely related goods. In responding to opposer’s request
for production of documents, applicant identified the
earlier applications, and specifically pointed to twenty-
three letters or emails between applicant and its attorney
relating to all three applications (e.g., “Letter dated
December 4, 2001 from Harris Zimmerman to Denny Jaeger
regarding filing date of trademark application”; and “Email
dated March 8, 2008 from Harris Zimmerman to Denny Jaeger re
discovery requests”); although the documents were
identified, they were not produced due to attorney-client
privilege (Request for Production No. 7). Other than these
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Opposition No. 91179284
letters or emails, applicant indicated that no documents
exist regarding its bona fide intent to use the involved
mark (Nos. 32 and 33).
In sum, applicant has no documentation to demonstrate
that it had the requisite bona fide intent to use the mark
BLACK MAIL in commerce when it filed the present
application. As evidenced by its responses to discovery
requests, applicant has no plans relating to use of the
mark, no plans relating to trade channels or target
customers, and no plans for expansion and growth of its
product line to be sold under the mark. So as to be clear,
the record is completely devoid of any evidence such as
product design efforts, manufacturing efforts, graphic
design efforts, test marketing, correspondence with
prospective licenses, preparation of marketing plans or
business plans, creation of labels, marketing or promotional
materials, and the like.
Applicant has not rebutted opposer’s showing that
applicant lacked the requisite bona fide intent. The fact
that applicant filed multiple applications for the mark, or
that there is correspondence between applicant and counsel
regarding applicant’s applications, hardly establishes a
bona fide intent to use the mark. If the filing and
prosecution of a trademark application constituted a bona
fide intent to use a mark, then in effect, lack of a bona
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Opposition No. 91179284
fide intent to use would never be a ground for opposition or
cancellation, since an inter partes proceeding can only be
brought if the defendant has filed an application. The
absence of documentation coupled with applicant’s failure to
take testimony or offer any evidence supporting its bona
fide intent to use convince us that applicant did not have a
bona fide intent to use the mark.
Further, that Denny Jaeger, applicant’s chief executive
officer, believed BLACK MAIL to be a good mark for future
use does not establish a bona fide intent to use. Likewise,
applicant’s mere statement that it intends to use the mark,
and its denial that it lacked a bona fide intent, do not
establish, in fact, that it had a bona fide intent to use
the mark in commerce when it filed the involved application.
Evidence bearing on bona fide intent
is “objective” in the sense that it is
evidence in the form of real life facts
and by the actions of the applicant, not
by the applicant’s testimony as to its
subjective state of mind. That is,
Congress did not intend the issue to be
resolved simply by an officer of
applicant later testifying, “Yes,
indeed, at the time we filed that
application, I did truly intend to use
the mark at some time in the future.”
J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, §19:14 (4th ed. 2009). Here, the complete lack
of documentation or testimony clearly outweighs any
subjective or sworn intent to use the mark.
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Opposition No. 91179284
Regarding applicant’s two prior applications to
register the same BLACK MAIL mark for goods identical or
similar to the ones listed in the present application, we
note that, in each instance, the application was abandoned
for failure to file a statement of use. The legislative
history of the Trademark Law Revision Act discusses an
applicant’s bona fide intent and sets forth an illustrative
list of circumstances that “may cast doubt on the bona fide
nature of the intent or even disprove it entirely.” The
circumstances include the filing of numerous intent-to-use
applications to replace applications which have lapsed
because no timely statement of use was filed. S. Rep. No.
100-515, 100th Cong. 2d Sess. at 23-25 (1988). This
circumstance accurately describes the present situation
where the involved application is replacing two prior
applications that were abandoned due to applicant’s failure
to file a statement of use, and provides additional evidence
bearing on applicant’s lack of a bona fide intent to use the
mark.4
Because we have found that applicant lacked a bona fide
intention to use the mark in commerce at the time it filed
the involved application, we decline to make a determination
4
So as to be clear, even if the present application constituted
applicant’s first attempt to register its mark, the record is
devoid of any probative evidence to show applicant’s bona fide
intent to use the mark.
14
Opposition No. 91179284
on the merits on the ground of likelihood of confusion. See
American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d
2036 (TTAB 1989), aff’d unpublished, 17 USPQ2d 1726 (Fed.
Cir. 1990).
Decision: The opposition is sustained on the ground of
a lack of bona fide intention to use the mark in commerce;
and registration to applicant is refused.
15