Digest of M.Z. Berger & Co., Inc. v. Swatch AG, No. 2014-1219 (Fed. Cir. June 4, 2015) (precedential). On appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Before Lourie, Chen, and Hughes.

Procedural Posture: Appellant appealed the sustainment of appellee’s opposition to appellant’s registration of the mark “iWatch.” CAFC affirmed.

  • Trademarks: The Federal Circuit interpreted what “bona fide intention” means under Section 1(b) of the Lanham Act and held that whether an applicant had a “bona fide intent” to use a mark in commerce at the time of an application to register the mark requires objective evidence of intent. The evidentiary bar is not high, but the evidence must indicate that the applicant’s intent to use the mark was firm and not merely an intent to reserve a right in the mark. In the instant case, the Federal Circuit affirmed the Board’s conclusion that appellee’s intent at the time of its application for the mark “iWatch” was merely to reserve a right in the mark, and not a bona fide intent to use the mark in commerce. Further, the Board did not err in its application of the standard for bona fide intent because the Board conducted an objective inquiry based on the totality of the circumstances.