M.Z. Berger & Co., Inc. v. Swatch Ag

United States Court of Appeals

for the Federal Circuit

______________________

M.Z. BERGER & CO., INC.,

Appellant

v.

SWATCH AG

(SWATCH SA) (SWATCH LTD.),

Appellee

______________________

2014-1219

______________________

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. 77/222,620.

______________________

Decided: June 4, 2015

______________________

ROBERT THOMAS SMITH, Katten Muchin Rosenman

LLP, Washington, DC, argued for appellant. Also repre-

sented by HOWARD ROBERT RUBIN, DANIEL LIPTON;

SAMSON HELFGOTT, JESSICA MEGAN GARRETT, New York,

NY.

JEFFREY A. LINDENBAUM, Collen IP, Ossining, NY, ar-

gued for appellee. Also represented by JESS M. COLLEN.

______________________

Before LOURIE, CHEN, and HUGHES, Circuit Judges.

2 M.Z. BERGER & CO. v. SWATCH AG

CHEN, Circuit Judge.

M.Z. Berger & Co., Inc. (Berger) appeals from the

Trademark Trial and Appeal Board (Board) decision to

sustain an opposition on grounds that Berger, at the time

of its application for the mark “iWatch,” lacked a bona

fide intent to use the mark in commerce under Sec-

tion 1(b)(1) of the Lanham Act, 15 U.S.C. § 1051(b)(1).

See Swatch AG v. M.Z. Berger & Co., 108 U.S.P.Q.2d

(BNA) 1463 (T.T.A.B. 2013) (Opinion). The Board con-

cluded that Berger merely intended to reserve a right in

the mark and thus lacked the requisite intent. Because

substantial evidence supports the Board’s determination,

we affirm.

I. BACKGROUND

Berger is a business that manufactures, imports, and

sells watches, clocks, and personal care products. On July

5, 2007, it filed an intent-to-use application at the Patent

and Trademark Office (PTO), seeking to register the mark

“iWatch” for over thirty different goods, each of which

belongs to one of three general categories: watches,

clocks, and goods related to watches and/or clocks (e.g.,

clock dials, watch bands, and watch straps). 1

The application included a declaration which states

that Berger has “a bona fide intention to use or use

through [Berger’s] related company or licensee the mark

in commerce on or in connection with the identified goods

and/or services.” Joint Appendix (J.A.) 1022.

1 Berger applied for the mark in standard charac-

ters and thus would have had no claim to any particular

style or lettering of the mark. 37 C.F.R. § 2.52(a). We

nonetheless refer to the mark in its mixed-case form

(iWatch) for ease of reference and because that is how

Berger presented the mark in its application.

M.Z. BERGER & CO. v. SWATCH AG 3

The PTO approved the application for publication on

May 21, 2008. On October 22, 2008, Swatch AG (Swatch)

filed a Notice of Opposition on the basis that “iWatch” is

confusingly similar to its mark, “Swatch.” Swatch later

added a claim opposing the mark on ground that Berger

lacked a bona fide intent to use the mark in commerce at

the time Berger filed the application.

The Board assessed whether Berger had the requisite

intent to use the iWatch mark by separately considering

each of the three general categories of goods. Opinion at

1475. With respect to Berger’s intent to use the iWatch

mark on two of the categories, clocks and goods related to

watches/clocks, the Board considered the testimony of

Berger’s owner and CEO, Bernard Mermelstein. Id. Mr.

Mermelstein not only created the iWatch mark and in-

structed that the trademark application be filed, but he

was Berger’s sole witness designated under Federal Rule

of Civil Procedure 30(b)(6). Id. The Board thus treated

Mr. Mermelstein’s testimony as representing the views of

the company at the time the application was filed. Id.

Although the trademark application recited watches,

clocks, and goods related to clocks and watches as the

goods Berger intended to sell with the proposed mark, Mr.

Mermelstein testified that Berger never intended for the

mark to be used for any goods other than watches:

Q. Are there other products other than watches

that you anticipate for use with the iWatch mark?

A. No.

J.A. 847. Mr. Mermelstein further testified:

Q. At the time you filed the application you didn’t

expect the iWatch mark to be used for clocks and

personal care products?

A. No. Correct.

J.A. 848.

4 M.Z. BERGER & CO. v. SWATCH AG

Berger’s paralegal who filed the application, Monica

Titera, testified that Mr. Mermelstein instructed her to

register the mark only for watches and clocks. J.A. 979.

When asked why the other related goods were identified

in the application, Ms. Titera claimed that the list was

“standard” and used to “leave all doors open.” J.A. 985.

Based on Mr. Mermelstein’s and Ms. Titera’s testimonies,

the Board concluded that Berger lacked a genuine intent

to use the mark on clocks and related goods. Opinion at

1475.

With respect to the third category of goods, watches,

the Board also concluded that Berger lacked a genuine

plan to commercialize the iWatch mark on such goods.

The Board considered the documentary evidence of record

but found that such evidence did not demonstrate intent

because the documents related solely to prosecution of the

trademark application. As for the testimonial evidence

presented by Berger, the Board found that Berger’s em-

ployees failed to tell a consistent story about the compa-

ny’s intent at the time the application was filed. The

Board lastly considered the company’s long history in the

watch business, but found that Berger’s inaction with

respect to a potential iWatch product diminished the

value of such evidence.

The only documents relating to the potential use of

the mark consisted of: (i) a trademark search performed

by the paralegal; (ii) an internal email describing the

substance of a discussion between the paralegal with the

trademark examining attorney concerning the applica-

tion; and (iii) a series of internal emails forwarding imag-

es of watches and a clock bearing the iWatch mark. Id. at

1472–73.

The Board agreed with Swatch that the documentary

evidence only related to the trademark application and

thus did not evidence a genuine intent to commercialize

certain watches using the iWatch mark. It found that the

M.Z. BERGER & CO. v. SWATCH AG 5

trademark search was performed only a few days prior to

the filing of the application. 2 The Board found that the

forwarded images were also prosecution-driven because

they appeared to have been created and submitted to the

PTO in response to the examining attorney’s request for

additional information on how Berger planned to use the

mark. Id. at 1472, 1473–74 (noting that the images were

created shortly before they were submitted to the PTO in

response to the request).

Moreover, the Board found there was conflicting tes-

timony among Berger employees regarding what the

images actually depicted. Some employees testified that

the images were pictures of actual mockup watches and

clocks. Id. at 1473. On the other hand, Mr. Mermelstein

testified that no such mockups were ever made and that

the images were generated for purposes of advancing the

trademark application. J.A. 867–68. And although

Berger employees claimed that creating physical models

and renderings was a normal part of its product develop-

ment process, Berger did not present any physical or

documentary evidence relating to the iWatch mark be-

yond the images submitted to the PTO. Opinion at 1474.

Based on Mr. Mermelstein’s admissions and the tim-

ing of the creation of the documents, the Board concluded

that the documentary evidence did not establish that

Berger had a bona fide intent to use the mark in com-

merce. Id. at 1474–75.

The Board then considered the remaining evidence,

which consisted of Berger employee testimony, and like-

wise found that it failed to establish that Berger genuine-

ly intended to use the mark in commerce. For example,

2 From our review of the record, it appears that the

trademark search was actually performed on July 5, 2007,

the same date the application was filed.

6 M.Z. BERGER & CO. v. SWATCH AG

Berger’s vice president of merchandising, Brenda Russo,

generally recalled having discussed the iWatch mark for a

few minutes with a buyer during a discussion in a Berger

showroom. See id. at 1476. But this testimony conflicts

with that of Mr. Mermelstein, who denied that Berger had

discussions regarding the iWatch mark with anyone

outside the company. J.A. 849 (“Q. Has the iWatch mark

been discussed outside of your office except with respect

to the counsel in this proceeding? A. No.”).

Ms. Russo’s testimony also appears to contradict rep-

resentations Berger made to the PTO during prosecution

of the trademark application. In particular, the examiner

rejected the mark as descriptive because the “i” in iWatch

could be interpreted as a well-established reference to

“interactive.” J.A. 50. In response to that rejection,

Berger alleged:

The “i” does not refer to any particular feature of

the watches or clocks. The “i” is purely arbitrary.

The images we previously submitted were just

mock-ups to show a buyer. However, the buyer

decided that models which previously had interac-

tive features were too expensive. Thus, there will

be no interactive features on any models.

J.A. 75. Ms. Russo, who was the only Berger witness who

claimed to have met with a buyer, testified to the contra-

ry. She recalled mentioning to the buyer that the watch

would have certain technological features, and when

asked at her deposition whether that buyer expressed

concern about the cost of the iWatch watch, she answered

“no.” See Opinion at 1476. Because the evidence relating

to Ms. Russo’s discussion with the buyer conflicted with

Berger’s statement during prosecution, the Board chose

not to credit the alleged meeting as demonstrating bona

fide intent. Id.

The Board considered that some of Berger’s employees

testified to having attended internal brainstorming ses-

M.Z. BERGER & CO. v. SWATCH AG 7

sions and merchandising meetings about the iWatch

mark, none of which were documented in the record. But

there was testimony from Mr. Mermelstein that suggested

any alleged meetings would not have been particularly

meaningful. For example, he testified that, as of 2010,

three years after the application was filed, Berger had yet

to figure out what type of watch it intended to sell with

the iWatch mark, or even whether such a watch would

have any particular features. J.A. 846. Mr. Mermelstein

also stated that, at the time of the filing, Berger had little

more than an aspiration to reserve rights in the mark in

case it later decided to develop an associated watch:

Q. Okay. And how did you come up with that

mark?

A. I think that I came up with the mark because

of the advent of technology and information gath-

ering around the globe over the last I guess few

years, I thought that if we decided to do a — ei-

ther a technology watch or information watch or

something that would have that type of character-

istics that would be a good mark for it.

J.A. 845 (emphasis added).

Finally, the Board considered the fact that Berger had

been in the business of making and selling watches and

clocks for many years. It determined, however, that

Berger’s history of making and selling watches was not

particularly relevant to the instant dispute because

Berger employees testified they had not previously made

a watch with technological features, and admitted they

never took any step toward developing any such features,

either contemporaneous with the filing of the application

or in the eighteen months thereafter. Opinion at 1476.

Though Berger represented to the PTO that the mark was

not restricted to “interactive” watches, the Board found

Berger’s inaction was significant in light of its contention

that the idea was to use the mark with a “smart” watch.

8 M.Z. BERGER & CO. v. SWATCH AG

Id. at 1476–77. Berger argued that its intent to use the

iWatch mark was corroborated by its use of a subsequent

mark, i-Kidz and its efforts to develop the mark iMove for

watches. The Board found this evidence unpersuasive, as

these efforts were related to different marks and had

occurred almost three years after the iWatch application

was filed. Id. at 1477 (noting intent must be considered

at the time the application was filed).

The Board ultimately concluded that some of Berger’s

evidence, reviewed in isolation, may have been sufficient

to establish intent. However, the circumstances as a

whole—including the lack of documentary evidence and

the conflicting testimony of Berger witnesses—

demonstrated that Berger lacked a bona fide intent to use

the mark in commerce as required, and sustained the

opposition under Section 1(b) of the Lanham Act. Id.

Berger appealed the Board’s decision to sustain the

opposition on this ground. 3 We have jurisdiction under 28

U.S.C. § 1295(a)(4)(B).

II. DISCUSSION

A

We review the Board’s legal conclusions without def-

erence and its factual findings for substantial evidence.

In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003).

“Substantial evidence is ‘more than a mere scintilla’ and

‘such relevant evidence as a reasonable mind would

accept as adequate’ to support a conclusion.” Id. (quoting

Consol. Edison v. NLRB, 305 U.S. 197, 229 (1938)).

3 The Board separately found that there was no

likelihood of confusion between the Swatch and iWatch

marks. Swatch challenges that finding in its briefing.

Because we affirm on the basis of lack of bona fide intent,

we do not address that aspect of the Board’s decision.

M.Z. BERGER & CO. v. SWATCH AG 9

B

The Trademark Law Revision Act of 1988 (TLRA) con-

templated the very scenario presented by this case. The

TLRA changed the Lanham Act by permitting applicants

to begin the registration process before actual use of the

mark in commerce at the time of filing, so long as the

applicant had a “bona fide intention . . . to use [the] mark

in commerce” at a later date. 15 U.S.C. § 1051(b)(1)

(emphasis added).

The prior version of the Lanham Act required that a

trademark applicant already be using the mark in com-

merce at the time of the application’s filing to qualify for

trademark registration. See Aycock Eng’g, Inc. v. Airflite,

Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009). This require-

ment, however, led to the practice of some applicants

engineering a “token use,” which refers to the most mini-

mal use of a trademark, designed purely to secure rights

in that mark before an applicant is truly prepared to

commercialize a good or service in connection with a given

mark. In the legislative record of the TLRA, Congress

noted that token use was problematic for a number of

reasons, including that such uses were not uniformly

available across industries. S. REP. NO. 100-515 (“Senate

Report”), at 6 (1988), reprinted in 1988 U.S.C.C.A.N.

5577, 5582. For example, token use for large or expensive

products, such as airplanes, or for service industries was

“virtually impossible.” Id. Another problem was that the

rules allowed registration based on minimal use, which

led to an undesirable surplus of registered but virtually

unused marks. Id. On the other hand, Congress also

recognized that the use requirement placed “significant

legal risks on the introduction of new products and ser-

vices” and disadvantaged certain industries and smaller

companies in the marketplace. Id. at 5. An applicant

already using a mark in commerce risks, for example,

potential infringement of a competitor’s pre-existing mark

10 M.Z. BERGER & CO. v. SWATCH AG

prior to being able to begin the process of securing its own

rights.

Congress sought to address these problems in passing

the TLRA. Id. To address the problem of “token use,” the

TLRA heightened the burden for use applications by

requiring that an applicant’s use be “bona fide use of [the]

mark in the ordinary course of trade.” Trademark Law

Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935

(effective November 16, 1989) (codified at 15

U.S.C. § 1127) (emphasis added). Concurrently, the

TLRA lowered the bar to starting registration by allowing

applicants to proceed on the basis that they have a “bona

fide intention to use the mark in commerce” at a later

date. 15 U.S.C. § 1051(b)(1); see H.R. REP. NO. 100-1028

(“House Report”), at 8–9 (1988) (“By permitting applicants

to seek protection of their marks through an ‘intent to use’

system, there should be no need for ‘token use’ of a mark

simply to provide a basis for an application. The use of

the term ‘bona fide’ is meant to eliminate such ‘token use’

and to require, based on an objective view of the circum-

stances, a good faith intention to eventually use the mark

in a real and legitimate commercial sense.”); J. Thomas

McCarthy, 3 McCarthy on Trademarks and Unfair Com-

petition § 19.14, at 19.47–48 (4th ed. 2014) (McCarthy on

Trademarks).

While applicants can begin the registration process

having only a sincere intent, the TLRA also requires that

applicants filing such intent-to-use applications must in

due course either (i) file a verified statement of actual use

of the mark, or (ii) convert the application into a use

application. 15 U.S.C. §§ 1051(b)(3), (c), (d). In other

words, such applicants are eventually required to show

that the mark is being used in commerce before obtaining

a registration on the mark.

M.Z. BERGER & CO. v. SWATCH AG 11

C

Because this court has not previously done so, we first

address the issue of whether lack of a bona fide intent is

proper statutory grounds on which to challenge a trade-

mark application. The PTO has long held that lack of

such intent is a proper basis on which an opposer can

challenge an applicant’s registration. 4 We agree. An

opposer is “entitled to rely on any statutory ground which

negates appellant’s right to the subject registration[.]”

Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024,

1031 (C.C.P.A. 1982) (citing Warth v. Seldin, 422 U.S.

490, 501 (1975)). Because a bona fide intent to use the

mark in commerce is a statutory requirement of a valid

intent-to-use trademark application under Section 1(b),

the lack of such intent is a basis on which an opposer may

challenge an applicant’s mark. We note that the one

other circuit court to address this issue has likewise so

held. Aktieselskabet AF 21. Nov. 2001 v. Fame Jeans Inc.,

525 F.3d 8, 21 (D.C. Cir. 2008).

D

We turn now to the question of what “bona fide inten-

tion” means under Section 1(b) of the Lanham Act. In its

entirety, Section 1(b)(1) specifies that:

4 See, e.g., L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d

(BNA) 1434, 1442–43 (T.T.A.B. 2012); Lane Ltd. v. Jack-

son Int’l Trading Co., 33 U.S.P.Q.2d (BNA) 1351, 1355–56

(T.T.A.B. 1994); Commodore Elecs. Ltd. v. CBM Kabushi-

ki Kaisha, 26 U.S.P.Q.2d (BNA) 1503, 1506–07 (T.T.A.B.

1993); see also 3 McCarthy on Trademarks § 20:21, at 20-

74–75; Trademark Board Manual of Procedure

(TBMP) § 309.03(c), note 18 (3rd ed. 2011) (collecting

cases).

12 M.Z. BERGER & CO. v. SWATCH AG

A person who has a bona fide intention, under cir-

cumstances showing the good faith of such person,

to use a trademark in commerce may request reg-

istration of its trademark on the principal register

hereby established by paying the prescribed fee

and filing in the Patent and Trademark Office an

application and a verified statement, in such form

as may be prescribed by the Director.

15 U.S.C. § 1051(b)(1).

There is no statutory definition of the term “bona

fide,” but the language is clear on its face that an appli-

cant’s intent must be “under circumstances showing the

good faith of such person.” Id. The reference to “circum-

stances showing the good faith” strongly suggests that the

applicant’s intent must be demonstrable and more than a

mere subjective belief. Both the PTO and the leading

treatise on trademark law have arrived at this same

understanding. See Lane, 33 U.S.P.Q.2d at 1355; 3

McCarthy on Trademarks § 19.14, at 19.48 (“Congress did

not intend the issue to be resolved simply by an officer of

the 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.’”).

This interpretation is confirmed by the legislative his-

tory, where Congress made clear that whether an appli-

cant’s intent is “bona fide” should be assessed on an

objective basis:

Although “bona fide” is an accepted legal term, it

can be read broadly or narrowly, subjectively or

objectively, by a court or the Patent and Trade-

mark Office. In connection with this bill, “bona

fide” should be read to mean a fair, objective de-

termination of the applicant’s intent based on all

the circumstances.

M.Z. BERGER & CO. v. SWATCH AG 13

Senate Report at 24 (emphasis added); see also id. at 23

(“Bona fide intent is measured by objective factors.”);

House Report at 8–9 (“The use of the term ‘bona fide’ is

meant to . . . require, based on an objective view of the

circumstances, a good faith intention to eventually use

the mark in a real and legitimate commercial sense.”). In

addition, an applicant’s intent must reflect an intention to

use the mark consistent with the Lanham Act’s definition

of “use in commerce”:

[T]he bona fide use of a mark in the ordinary

course of trade, and not made merely to reserve a

right in a mark.

15 U.S.C. § 1127; see also Senate Report at 24–25 (quoting

the definition). The applicant’s intention to use the mark

in commerce must have been “firm.” Senate Report at 24.

Neither the statute nor the legislative history indi-

cates the specific quantum or type of objective evidence

required to meet the bar. Indeed, Congress expressly

rejected inclusion of a statutory definition for “bona fide”

in order to preserve “the flexibility which is vital to the

proper operation of the trademark registration system.”

Id. 5

5 The PTO has promulgated a rule specifying that

an applicant’s ongoing efforts to make use of a mark “may

include product or service research or development,

market research, manufacturing activities, promotional

activities, steps to acquire distributors, steps to obtain

governmental approval, or other similar activities.” 37

C.F.R. § 2.89(d). Although this rule relates to the re-

quired showing of “good cause” for an extension to file a

statement of use, i.e., at a time after the initial filing,

such evidence may also indicate sources of objective

14 M.Z. BERGER & CO. v. SWATCH AG

Accordingly, we hold that whether an applicant had a

“bona fide intent” to use the mark in commerce at the

time of the application requires objective evidence of

intent. 15 U.S.C. § 1051(b)(1). Although the evidentiary

bar is not high, the circumstances must indicate that the

applicant’s intent to use the mark was firm and not

merely intent to reserve a right in the mark. See

id. § 1127; see also Senate Report at 24–25. The Board

may make such determinations on a case-by-case basis

considering the totality of the circumstances.

III. M.Z. BERGER’S APPEAL

A

Berger argues that it satisfied the minimal standard

for intent, and that the Board improperly discounted

Berger’s evidence. Berger’s arguments hinge on its belief

that the Board should have found the intent requirement

satisfied because Berger offered some objective evidence

in support of its position. Viewed in isolation, the evi-

dence Berger prefers to focus on could perhaps lead a

reasonable fact-finder to conclude there was bona fide

intent. As discussed above, however, all circumstances

regarding an applicant’s bona fide intent must be consid-

ered, including those facts that would tend to disprove

that Berger had the requisite intent. 15 U.S.C.

§ 1051(b)(1); see also Lane, 33 U.S.P.Q.2d at 1353

(“[W]hether an applicant has a bona fide intention . . .

must be an objective determination based on all the

circumstances.” (emphasis added)).

Here, viewing the evidence as a whole, we find that

substantial evidence supports the Board’s conclusion.

First, we agree with the Board that the documentary

evidence of an applicant’s bona fide intent to use the mark

in commerce.

M.Z. BERGER & CO. v. SWATCH AG 15

evidence offered by Berger appears to relate only to the

prosecution of the trademark application. See Opinion at

1474–75 (citing Research In Motion Ltd. v. NBOR Corp.,

92 U.S.P.Q.2d (BNA) 1926, 1931 (T.T.A.B. 2009) (“If the

filing and prosecution of a trademark application consti-

tuted a bona fide intent to use a mark, then in effect, lack

of a bona 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 applica-

tion.”)). The paralegal who performed the trademark

search testified that such searches are routinely conduct-

ed before Berger files a trademark so that Berger does not

waste time filing an application on an unavailable mark.

It is undisputed that the internal email relaying the

substance of a discussion with the trademark examining

attorney also relates to the application. The other inter-

nal emails, which forwarded the images of two watches

and a clock bearing the mark, were undisputedly submit-

ted to the PTO in response to the trademark examining

attorney’s request for documents showing how the mark

would be used. Opinion at 1473–74.

Faced with conflicting statements from Berger wit-

nesses about whether the images were created for prose-

cution or for business reasons evidencing intent, the

Board exercised its discretion in crediting the testimony of

Mr. Mermelstein, Berger’s Rule 30(b)(6) witness, over that

of other Berger employees. Id. at 1474 (relying on Mr.

Mermelstein’s admissions that the images were created

for the trademark application). We defer to the Board’s

determination of the weight and credibility of such evi-

dence. See, e.g., Velander v. Garner, 348 F.3d 1359, 1371

(Fed. Cir. 2003) (stating, in a PTO interference proceed-

ing, that it is “within the discretion of the trier of fact to

give each item of evidence such weight as it feels appro-

priate”). Having found that the documentary evidence

was generated in relation to the trademark application,

16 M.Z. BERGER & CO. v. SWATCH AG

the Board reasonably determined that such images were

likely created with an intention to advance the prosecu-

tion of the trademark application rather than an intention

to move forward on an actual product in commerce. See

Opinion at 1474–75.

Berger has offered no reason to disturb the Board’s

findings based on the remaining testimonial evidence.

The Board properly exercised its judgment in finding that

Berger lacked a bona fide intent to use the mark on any of

the goods identified in the application. Mr. Mermelstein

admitted that there was no intent to use the iWatch mark

for clocks, and Ms. Titera conceded that the other accesso-

ries and related goods were only designated to leave

Berger’s options open. Id. at 1475.

With respect to watches, the Board considered con-

flicting testimony about Berger’s alleged meeting with a

buyer, as well as whether the watch would be technologi-

cal in nature. The Board was within its discretion to

disagree with Berger’s bottom-line position that it pos-

sessed a bona fide intent, given the inability of the Berger

witnesses to pull together a consistent story on a number

of issues, e.g., would the watch be technological, did

actual physical samples exist, were potential customers

ever consulted. Critically, Mr. Mermelstein all but con-

ceded that Berger had not yet made a firm decision to use

the mark in commerce at the time of its application. J.A.

845 (“[I]f [Berger] decided to do a — either a technology

watch or information watch or something that would have

that type of characteristics that [iWatch] would be a good

mark for it.”). See, e.g., Research in Motion, 92

U.S.P.Q.2d at 1931 (applicant’s stated belief that the

mark would be “a good mark for future use” does not

establish a bona fide intent to use).

We also find unavailing Berger’s contention that the

Board ignored Berger’s history in the watch industry.

M.Z. BERGER & CO. v. SWATCH AG 17

The Board did consider Berger’s past but noted that even

though the iWatch mark was allegedly to be used with a

“smart” watch, Berger had never made such a watch and

took no steps following the application to develop such a

watch. Opinion at 1476–77. We find no error with the

Board’s determination that there was no nexus between

Berger’s general capacity to produce watches and the

capacity required to produce a “smart” watch.

Ultimately, we find that the Board properly exercised

its judgment as the trier of fact in assessing the evidence

and concluding that Berger did not have a bona fide

intent to use the mark at the time of its application.

Berger’s contention that the Board “missed the forest for

the trees” by systematically discrediting each piece of

evidence is misplaced. Quite to the contrary, the Board’s

opinion reflects that it carefully considered Berger’s

evidence and understandably found that Berger lacked

“bona fide” intent to use the iWatch mark on the recited

goods at the time of the application was filed. E.g., id. at

1474, 1476.

The bar for showing a bona fide intent is not high.

But in our view, considering the inconsistent testimony

offered by Berger employees and the general lack of

documentary support, substantial evidence supports the

Board’s conclusion that Berger’s intent at the time of the

application was merely to reserve a right in the mark, and

not a bona fide intent to use the mark in commerce. Id. at

1477.

B

Berger also argues that the Board applied the wrong

legal standard for bona fide intent, “because it insisted

upon evidence that [Berger] had taken steps to promote,

develop and market the iWatch mark at the time that it

filed its original application.” Appellant’s Br. at 32; see

also id. at 18, 19, 22, 23, 34, 37, 41, 42. Berger argues

18 M.Z. BERGER & CO. v. SWATCH AG

that the Board’s emphasis on objective evidence conflicts

with the application and registration steps outlined in the

PTO’s administrative review process and regulations. Id.

at 37–44. In other words, Berger contends the Board

erred by applying a more stringent threshold for bona fide

intent than required by statute or by the PTO’s regula-

tions and procedures.

We disagree. Nowhere did the Board state that the

applicable standard requires an applicant to have actually

promoted, developed, and marketed the mark at the time

of the application. Nor did the Board state that it applied

such a standard. To the contrary, the Board’s opinion

reflects that it reached its conclusions by considering all

the relevant facts and circumstances, including those that

indicated Berger lacked intent. This is indeed the proper

inquiry under the Lanham Act. 15 U.S.C. § 1051(b)(1)

(intent to use must be “under circumstances showing the

good faith of such person”).

We also find that the Board’s opinion is not incon-

sistent with PTO practice. The PTO is within its discre-

tion to allow intent-to-use applications to proceed, at the

time of filing, upon only a verified statement of bona fide

intent to use. See id. § 1051(b)(3)(B). However, the

agency has the statutory authority to seek further evi-

dence of the applicant’s “bona fide” intent. See

id. § 1051(b)(1). Indeed, not only did the agency contem-

plate that an applicant’s intent to use may be at issue in

inter partes proceedings, but it reserved the right to make

its own inquiry into the issue under appropriate circum-

stances:

Generally, the applicant’s sworn statement of a

bona fide intention to use the mark in commerce

will be sufficient evidence of good faith in the ex

parte context. Consideration of issues related to

good faith may arise in an inter partes proceeding,

M.Z. BERGER & CO. v. SWATCH AG 19

but the USPTO will not make an inquiry in an ex

parte proceeding unless evidence of record clearly

indicates that the applicant does not have a bona

fide intention to use the mark in commerce.

Trademark Manual of Examining Procedure (TMEP)

§ 1101.

We find that the Board did not err in its application of

the standard for bona fide intent. As discussed supra,

whether an applicant has a bona fide intent to use a mark

in commerce is an objective inquiry based on the totality

of the circumstances. The Board conducted such an

inquiry.

IV. CONCLUSION

We have considered Berger’s remaining arguments

and find them unavailing. For the foregoing reasons, we

conclude that the Board properly sustained the opposition

on the basis that Berger lacked a bona fide intention to

use the mark in commerce at the time of the application.

AFFIRMED