The United States Court of Appeals for the Federal Circuit affirmed the TTAB’s decision to sustain an opposition to registration of “iWatch” on the grounds that M.Z. Berger & Co., Inc. (Berger) lacked a bona fide intent to use the mark in commerce. 

Berger filed an intent-to-use application to register the mark “iWatch” for use in connection with watches, clocks, and goods related to watches. Swatch filed an opposition on several grounds, including that Berger lacked a bona fide intent to use the mark.

Berger’s owner and CEO Bernard Mermelstein testified that Berger never intended for the mark to be used on any goods other than watches. Berger’s paralegal, who filed the application, testified that she was instructed to only register the mark for watches and clocks, but that she added the other related goods because they were part of a “standard” list used to “leave all doors open.” The TTAB found that other evidence proffered by Berger - a trademark search, internal emails, and images that were created for prosecution of the application - was solely related to the application and did not evidence plans to use the mark. Employees provided inconsistent testimony regarding the images, with some testifying the images were actual mockups of a future “iWatch” watch or clock, and Mr. Mermelstein testifying that no such mockups were ever made and that the pictures were intended solely to move the application forward.

Mr. Mermelstein also testified that Berger had “little more than an aspiration to reserve rights in the mark in case it later decided to develop an associated watch.” Furthermore, Berger did not take any steps towards developing technological features in a watch, something they had never offered. The TTAB concluded that, looking at the evidence as a whole, Berger lacked a bona fide intent to use the mark in commerce.

On appeal, the Federal Circuit for the first time held that a lack of a bona fide intent to use a mark is a proper statutory ground on which to challenge an application. The court added that “[a]lthough 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” and that whether an applicant had a bona fide intent is an objective inquiry based on a totality of the circumstances. 

The court agreed with the TTAB that the evidence submitted by Berger related only to prosecution of the application and did not support a finding that Berger had a bona fide intent to use the mark with watches. 

M.Z. Berger & Co. v. Swatch AG, Appeal No. 2014-1219 (Fed. Cir. June 4, 2015).