Leech Tishman

The Federal Circuit has ruled that M.Z. Berger & Co. was rightfully denied a federal trademark registration for the term “iWatch.”

Berger is a 60-year-old New York company that manufactures, imports, and sells watches, clocks, and other products. In 2007, Berger filed an intent-to-use application with the US Patent and Trademark Office in connection with more than 30 categories of goods, including watches, clocks, and watch bands.

The application included a declaration that Berger had 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.

Swatch vs. iWatch

Swatch AG, the Swiss watchmaking giant, filed a Notice of Opposition in the Trademark Trial and Appeal Board (TTAB) on the grounds that “iWatch” was confusingly similar to its own mark “Swatch.”

(Interestingly, Apple, which came out with the Apple Watch in April, did not file an opposition against Berger’s proposed trademark registration.)

Swatch also claimed that Berger lacked a bona fide intent to use the “iWatch” mark in commerce.

Although the trademark application listed watches, clocks, and related goods as those with which Berger intended to use the iWatch mark, Berger’s owner and CEO testified in the opposition proceeding that he never actually intended to use the mark for any goods other than watches.

With respect to watches, the TTAB found that “Berger lacked a genuine plan to commercialize the iWatch mark on such goods”:

Berger’s employees failed to tell a consistent story about the company’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 application; and (iii) a series of internal emails forwarding images of watches and a clock bearing the iWatch mark.

The TTAB concluded that the evidence “did not evidence a genuine intent to commercialize certain watches using the iWatch mark.”

The Federal Circuit agreed.

The case is M. Z. Berger & Co., Inc. v. Swatch AG.

Takeaway

The trademark registration system is not intended to allow a business to “park” or “reserve” a trademark “just in case” it wants to use it later.

A bona fide intention to use the mark must be shown by more than just tasks related to preparing the trademark application. If challenged, a trademark applicant must be prepared to show that it took steps to create and sell a product bearing the mark.

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Photo Attribution: “White AppleWatch with Screen” by Justin14 and licensed under the Creative Commons Attribution-Share Alike 4.0 International license.

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