M.Z. Berger & Co., Inc. v. Swatch Ag , 787 F.3d 1368 ( 2015 )

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