Tuesday, February 2, 2010

BLACK MAIL refused for Lack of Proof of Bone Fide Intent to Use the Mark

Research in Motion Limited ("RIM"), well known owner of the BLACKBERRY mark, opposed the registration of the mark BLACK MAIL by the NBOR Corporation ("NBOR"). Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 to application Serial No. 77090059 filed on January 24, 2007.

Applicant filed 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"

RIM opposed the registration of BLACK MAIL on two grounds,

  • likelihood of confusion with its mark BLACKBERRY under 15 USC § 1052(d); and
  • lack of a bone fide intent to use the mark in commerce.
The Trademark Trial and Appeal Board ("TTAB") did not reach the issue of likelihood of confusion because it found that NBOR could not establish by a preponderance of the evidence that it had a bone fide intent to use BLACK MAIL in commerce.

The TTAB listed the following as what NBOR did not provide to prove a bone fide intent to use the mark:

  • it has not offered any goods or services for sale under the involved mark;
  • the mark has not been used and no plans have been made as to how the mark may be used;
  • there is no projected date of first use in commerce;
  • no channels of trade have been formulated or planned for the future;
  • the classes of consumers and geographic areas of sales have not yet been determined;
  • applicant has not undertaken any market studies, surveys, or focus groups; and
  • no documents exist regarding plans for expansion and growth of the product and service lines under the mark.
NBOR had previously filed two trademark applications for the same mark and both applications were abandoned because no Statements of Use were filed. NBOR's argued that its previously filed applications and twenty-three letters or emails to its attorney relating to the present and applications a bone fide intent to use the mark. The TTAB rejected its argument:

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).

This case provides a reminder that a trademark application under Section 1(b) of the Lanham requires objective documentation of a bone fide intent to use the mark no later than the beginning of the opposition period and objective steps should be taken to use the mark at the time the application is filed.


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