The number of successful oppositions against trademark applications based on a claim that the applicant had “no bona fide intent to use” has been increasing in recent years. On September 10, 2015, in Swiss Grill Ltd. v. Wolf Steel Ltd., the United States Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”) maintained this trend by sustaining an opposition against an intent to use application, finding that the Applicant lacked the necessary bona fide intent to use the mark for the identified goods when the application was filed.This dispute arose from a business relationship gone sour. The Opposers, Swiss Grill Ltd. and its principals (“Swiss Grill” or “Opposers”), are based in the United Kingdom, and for a time were the UK distributor of Applicant Wolf Steel Ltd.’s (“Wolf Steel” or “Applicant”) NAPOLEON brand outdoor barbeques and grills. As the parties’ business relationship deteriorated, Swiss Grill launched its own brand of outdoor barbeques and grills under the SWISS GRILL trademark. The parties had an acrimonious meeting at a leading UK trade show when Wolf Steel’s CEO noticed Opposers’ prominent placement and marketing of its SWISS GRILL barbeques and grills at its booth, to the detriment of the placement and marketing of Wolf Steel’s NAPOLEON grills.
The conflict eventually moved to the United States. Swiss Grill began discussions with an American distributor concerning possible marketing and sales SWISS GRILL branded products. Swiss Grill’s pre-sale activities in the United States were substantial, including joining the leading United States trade association in May 2011. Swiss Grill believed that its membership in the association was immediately made public.
The following month, in June 2011, Wolf Steel filed its application to register
for barbeques, outdoor grills and related products and services.
A party may establish a prima facie case of lack of bona fide intent by demonstrating that the other party lacks any documentary evidence demonstrating such intent before the filing date of the trademark application. An applicant’s intent to use the mark in commerce must be more than a mere subjective belief that it intends to launch a business. Moreover, the TTAB typically evaluates the applicant’s evidence on a case-by-case basis and considers the totality of the circumstances.
In this case, Wolf Steel initially produced 17 pages of documents, followed by 37 pages of “supplemental” documents. The TTAB noted that none of Wolf Steel’s documents predated the filing date of the application. In fact, many of Wolf Steel’s initial tender of documents did not reference Wolf Steel or its proposed trademark at all. The TTAB viewed Wolf Steel’s later, “supplemental”, responses with skepticism, characterizing them as more “revised” than “supplemental.” While the record contained some evidence that Wolf Steel offered outdoor grills in Canada under the trademark SWISS GRILLS prior to its United States application’s filing date, Wolf Steel’s main argument was that its supplemental documents substantiated the claim that in the United States it intended to sell “specialty grills” for indoor use, and not the typical outdoor grill. The TTAB disagreed
After originally serving discovery responses consistent with an intent to offer NAPOLEON-type traditional outdoor grills under the SWISS GRILLS mark, despite the mark allegedly being adopted in 2009 as an “allusion” to specialty European products, Applicant materially and substantively altered its original discovery responses with the “supplemental” responses claiming that, all along, Applicant’s intent was actually to use the mark for specialty European products. The sale of “traditional” outdoor grills in Canada under Opposers’ SWISS GRILL mark is therefore not evidence of an intent to use the applied-for SWISS GRILLS mark for specialty European products in the United States.
To be blunt, the record as a whole reveals that Applicant is unable to get its story straight…. In fact, its evolving and internally inconsistent story lines read more as after-the-fact rationalizations, than as credible evidence of a bona fide intent to use SWISS GRILLS in the United States for the identified barbeques and outdoor grills. These inconsistencies, combined with “the general lack of documentary support” or other objective evidence of its bona fide intent to use the mark leads us to find that Applicant’s intent at the time it filed the application was not a bona fide intent to use the mark in commerce.
(Slip. Op. at 22 – 23)
Thus, the TTAB had no trouble finding that Wolf Grill’s assertions amounted to mere subjective claims of intention, rather than objective evidence. Therefore, the TTAB sustained Swiss Grill’s claim that Wolf Grill lacked a bona fide intent to use the mark SWISS GRILLS when it filed its trademark application.
This decision is another reminder to trademark applicants that trademark applications based on an intent to use are vulnerable to attack. Intent to use trademark applicants should be aware that they need to show not only a subjective intent, but concrete plans and a real ability to commercialize the mark in connection with each good and service listed on the application.