Volvo Trademark Holding ABv.CKL Holdings N.V.

Trademark Trial and Appeal BoardMay 26, 2020

91241032 (T.T.A.B. May. 26, 2020)

Baxley May 26, 2020 Opposition No. 91241032 Volvo Trademark Holding AB v. CKL Holdings N.V. Before Taylor, Wolfson and Lynch, Administrative Trademark Judges. By the Board: This case now comes up for consideration of Opposer Volvo Trademark Holding AB’s (“Opposer”) motion (filed January 8, 2020) for summary judgment on its pleaded claims that Applicant CKL Holdings N.V. (“Applicant”) did not have a bona fide intent to use the involved mark REVOLVO when it filed its involved application and likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d). I. Background Applicant seeks to register the mark REVOLVO in standard characters for goods in International Classes 16 and 26.1 Opposer filed a notice of opposition to 1 Application Serial No. 87356898, filed March 2, 2017. The application was filed under Trademark Act Section 44(d), 15 U.S.C. § 1126(d), with a claim of priority, based on Applicant’s Benelux application Serial No. 1338775. In a November 21, 2017 response to an Office Action, Applicant added Trademark Act Section 1(b), 15 U.S.C. § 1051(b) as a basis for registration, and stated that it does not intend to rely upon Trademark Act Section 44(e), 15 U.S.C. § 1126(e), as a basis, but wishes to retain its claim of priority. Applicant’s Benelux UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 General Contact Number: 571-272-8500 General Email: TTABInfo@uspto.gov This decision is not a TTAB precedent. Opposition No. 91241032 2 registration of Applicant’s mark on the grounds of likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on its VOLVO marks for various goods and services, and dilution of those marks by blurring under Trademark Act Section 43(c), 15 U.S.C. § 1125(c),2 1 TTABVUE. In an amended notice of application has been withdrawn. 19 TTABVUE 27. The identification of goods in this application is “Paper; cardboard; printed publications, namely, books, manuals, and instructional materials in the fields of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest and film production; printed matter, namely, books, manuals, and instructional materials in the fields of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest and film production; Inking Ribbons for computer printers; bookbinding materials; books in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest and film production; adhesives for stationery or household purposes; artists' paint brushes; printed sheet music; printed music scores; printed periodical magazines in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest and film production; photographs; stationery and educational supplies, namely, blank note books and school supply kits containing various combinations of selected school supplies, namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighter pens, folders, notebooks, paper, protractors, paper clips, pencil sharpeners, writing grips, glue for stationery or household use and book marks; typewriters; printed instructional and teaching material, except apparatus, namely, in the field of art, music and artistic performances, education, entertainment, fashion, sports, culture, general human interest and film production; Plastic films used as packaging for food; Printing blocks” in International Class 16 and “Lace; Embroidery; ribbons; braids; buttons; hooks and eyes; pins, namely, sewing pins, hat pins, curling pins, safety pins, bobby pins, marking pins, ornamental novelty pins; needles; artificial flowers” in International Class 26. 2 Opposer’s pleaded registrations include: Registration No. 636129 for the mark VOLVO in typed form for “automobiles and trucktractors and parts thereof” in International Class 12. The registration was issued on October 23, 1956 and has been renewed. The registration includes a statement that the term VOLVO means “I am rolling” in Latin. Registration No. 974197 for the mark VOLVO in the following stylized form, , for “automotive repair services” in International Class 37. The registration was issued on November 27, 1973 and has been renewed. Registration No. 1182050 for the mark VOLVO in the following stylized form, , for “printed matter-namely, automobile owners’ manuals” in International Class 16. The registration was issued on December 15, 1981 and has been renewed. The registration includes a statement that the English translation of VOLVO is “I am rolling.” Opposition No. 91241032 3 opposition, 9 TTABVUE 7-40, Opposer added a claim that Applicant did not have a bona fide intent to use the mark in commerce when it filed the involved application. Applicant in its answers, 5 and 12 TTABVUE, denied the salient allegations of Opposer’s claims. II. Motion for summary judgment granted on no bona fide intent to use claim We turn first to the motion for summary judgment on the lack of bona fide intent to use claim. Opposer contends that there is no genuine dispute as to its standing in view of its ownership of its pleaded registrations and sales of vehicles and related goods and services in the United States under the mark VOLVO by its predecessors, licensees and related companies. 17 TTABVUE 5-6 and 23-45. Opposer contends that, during discovery, Applicant admitted in response to both requests for admissions and Registration No. 1627262 for the mark VOLVO in typed form for “clothing, namely - caps, sweaters, shirts and jackets” in International Class 25. The registration was issued on December 11, 1990 and has been renewed. Registration No. 3207372 for the mark VOLVO in standard characters for goods in International Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 22, 24, 25, 27, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45, including “Paper, cardboard; goods made from these materials, namely, paper cubes pads and note paper; printed matter, namely, books in the fields of vehicles, engines/motors and machines, motor sports, sailing, golf, instruction books in the fields of vehicles, engines/motors and machines, computer/computer software manuals, periodicals in the nature of monthly magazines and newsletters in the field of vehicles, engines/motors and machines, magazines in the field of vehicles, engines/motors and machines, calendars, posters, spare parts lists in the field of vehicles, engines/motors and machines, maintenance manuals for vehicles, engines/motors and machines; adhesives for stationery or household purposes; photographs; stationery, pens and pencils; office requisites, namely, pen stands, printed instructional and teaching material in the field of vehicles, engines/motors and machines; plastic materials for packaging in the nature of plastic packaging bags, plastic carrier bags” in International Class 16. The registration was issued on February 13, 2007 and has been renewed. The registration includes a statement that “The foreign wording in the mark translates into English as I am rolling.” The registration’s identification of goods had included “Lace and embroidery; ribbons; and braid; buttons for clothing; hooks and eyes; marking pins; needles; sewing kit comprising needles, thimbles and thread[;] artificial flowers” in International Class 26, but that class of goods was deleted when the registration was renewed. Opposition No. 91241032 4 document requests that it did not have any documents as evidence of its bona fide intent to use the involved mark for any of the goods identified in the involved application as of the March 2, 2017 filing date of its involved application. 9 TTABVUE 42-613 and 17 TTABVUE 6-7. In support of its motion for summary judgment, Opposer relies on Applicant’s responses to requests for admission and document requests that Opposer submitted in support of its motion (filed November 26, 2018) for leave to file an amended notice of opposition wherein it added the no bona fide intent to use claim.4 9 TTABVUE 42- 62. Opposer also relies upon the declaration of its Managing Director, Monica Dempe, who avers, among other things, to use by its predecessors, licensees and related companies of the mark VOLVO in the United States on “cars and other products” since at least the 1950s and Opposer’s ownership of the pleaded registrations. 17 TTABVUE 17-45. In opposition, Applicant contends that it is a “venture capitalist company in the business of, inter alia, developing and investing into start-ups offering goods and 3 In support of its no bona fide intent to use claim, Opposer relies on Applicant’s responses to requests for admission and document requests that it submitted as exhibits to its brief in support of its motion for leave to file an amended notice of opposition through which it added that claim. 9 TTABVUE 42-61. 4 In response to request for admission nos. 1-33, Applicant admitted that it “has no documents that evidence Applicant’s bona fide intent to use the mark REVOLVO on or in connection with the goods identified … as [to each individual item in the identification of goods in the involved application in International Classes 16 and 26] as of March 2, 2017.” 9 TTABVUE 42-50. In response to document request nos. 2-34, wherein Opposer requested “documents that evidence Applicant’s bona fide intent to use its mark on or in connection with the goods identified … as [to each individual item in the identification of goods in the involved application in International Classes 16 and 26] as of March 2, 2017,” Applicant responded “that there are no responsive documents.” 9 TTABVUE 52-61. Opposition No. 91241032 5 services across a multitude of industries”; that “[o]ne of the deciding factors in [Applicant’s] investment strategy focuses on whether a particular brand is sufficiently protected across every jurisdiction in which the business operates or could operate in the future”; “that, prior to dedicating an extensive amount of time and investing sizeable resources into the marketing and development of a branded product or service, it is of paramount importance to first ensure that trademark protection for the brand can be obtained in every applicable jurisdiction”; and that “development and marketing of the REVOLVO brand … will be pursued aggressively once proceedings involving any potentially adverse registrations are resolved.” 19 TTABVUE 7-9. As evidence, Applicant submits a declaration of its Trademark Manager Ivy Sheila Villarta, through which Applicant submits a copy of Applicant’s now-withdrawn Benelux application Serial No. 1338775. In that declaration, Ms. Villarta avers in relevant part as follows: 2. [Applicant] is in the business of, inter alia, developing and investing into start-ups offering goods and services across various realms of products, including Class 16 and 26 goods. 3. In mid-2016, [Applicant] undertook to establish a brand in connection with various printed publications and ornamental/decorative goods. In developing a brand in connection with this venture, [Applicant] adopted the unique term REVOLVO…. 4. One of the deciding factors in [Applicant’s] investment strategy focuses on whether a particular brand, i.e. REVOLVO, is sufficiently protected across every jurisdiction in which the business operates or could operate in the future. With the exponential growth of internet commerce, this often means that the brand must have world-wide protection. … Opposition No. 91241032 6 7. [I]t has always been [Applicant’s] strategy that, prior to dedicating an extensive amount of time and investing sizeable resources into the marketing and development of a branded product or service, it is of paramount importance to first ensure that trademark protection for the brand can be obtained in every applicable jurisdiction. 8. As part of [Applicant’s] strategy, and to ensure that the ‘REVOLVO’ brand is adequately protected prior to investing substantial resources, [Applicant] filed trademark applications for the term in two of its biggest markets, the United States and Europe, in connection with various Class 16 and 26 goods. The Benelux Application … is annexed hereto…. 9. In fact, it is a fair approximation that [Applicant] has expended over $20,000 in attempting to procure trademark registrations to protect and police the brand ‘REVOLVO’ in various jurisdictions around the world. 10. However, as a consequence of the instant action being commenced, [Applicant] was compelled to suspend its global protection efforts for the brand, pending the Board’s determination of whether or not [Applicant] is entitled to register REVOLVO in the United States. 11. It is [Applicant’s] intent that, once it has secured unfettered and unencumbered rights in the ‘REVOLVO’ brand in each jurisdiction in which goods bearing the brand will be offered for sale, the entity will begin aggressively developing, marketing and offering the related products for sale on various e-commerce websites such as Amazon.com. 19 TTABVUE 23-25. In reply, Opposer contends that filing a foreign application and relying upon that application in the United States is insufficient to constitute a bona fide intent to use a mark when the United States application was filed; that any delay caused by this proceeding does not establish a bona fide intent to use the mark when the application was filed; that reserving a right in a mark as a business strategy is not a bona fide intent to use a mark; and that Applicant has not produced evidence that it had the capacity to market or produce any of the identified goods when it filed the involved application. 20 TTABVUE 3-5. Opposition No. 91241032 7 Summary judgment is an appropriate method of disposing of cases in which there are no genuine disputes of material fact, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c). The party moving for summary judgment has the initial burden of demonstrating that there is no genuine issue of material fact remaining for trial and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317 (1987). In a motion for summary judgment, the moving party, in this case Opposer, has the burden of establishing the absence of any genuine disputes of material fact for trial and that it is entitled to judgment as a matter of law. In considering the propriety of summary judgment, all evidence must be viewed in a light favorable to the nonmovant, in this case Applicant, and all justifiable inferences are to be drawn in the nonmovant’s favor. The Board may not resolve issues of material fact; it may only ascertain whether such issues are present. See Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). When the moving party’s motion is supported by evidence sufficient to indicate that there is no genuine dispute of material fact, and that the moving party is entitled to judgment, the burden shifts to the nonmoving party to demonstrate the existence of specific genuinely-disputed facts that must be resolved at trial. The nonmoving party may not rest on the mere allegations of its pleadings and assertions of counsel, but must designate specific portions of the record or produce additional evidence Opposition No. 91241032 8 showing the existence of a genuine issue of material fact for trial. In general, to establish the existence of disputed facts requiring trial, the nonmoving party “must point to an evidentiary conflict created on the record at least by a counterstatement of facts set forth in detail in an affidavit by a knowledgeable affiant.” Octocom Sys. Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 941, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990). To obtain summary judgment on a no bona fide intent to use claim, Opposer must first establish that there is no genuine dispute as to its standing to maintain this proceeding. Opposer, through the declaration of its Managing Director Monica Dempe, has made of record copies obtained from the USPTO’s TSDR database of Opposer’s pleaded registrations showing current title and status for the mark VOLVO and has averred to longstanding use by Opposer’s predecessors, licensees and related companies of the mark VOLVO in sales of cars and other products. Moreover, Applicant does not dispute Opposer’s standing. Based on the foregoing, we find that Opposer has established that there is no genuine dispute that Opposer has a real interest in the outcome of this proceeding and therefore has standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). We turn next to whether Opposer has established that there is no genuine dispute of material fact on the claim that Applicant lacked a bona fide intent to use the mark in commerce when it filed his involved application. As noted supra, Applicant filed its Opposition No. 91241032 9 application under Trademark Act Section 44(d), 15 U.S.C. § 1126(d), and amended the filing basis to Trademark Act Section 1(b) during ex parte prosecution. An applicant who has applied for registration under Trademark Act Section 44(d) of the Lanham Act, claiming priority based on a registration of his mark in a foreign country, must, in his United States application, verify, in writing, that he has a bona fide intent to use the mark in United States commerce. Trademark Rule 2.34(a)(4)(ii); 37 C.F.R. § 2.34(a)(4)(ii). In determining whether an applicant under Section 44(d) has the requisite bona fide intent to use the mark in United States commerce, we use the same objective analysis of good faith used to determine whether a Section 1(b) applicant has the required bona fide intent to use the mark in United States commerce. See Lane Ltd. v. Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994). Our primary reviewing court has stated 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. 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. M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1898 (Fed. Cir. 2015) (emphasis added). An applicant’s bona fide intent to use a mark must reflect an intention that is firm, though it may be contingent on the outcome of an event (that is, market research or product testing) and must reflect an intention to use the mark “‘in the ordinary course of trade, ... and not ... merely to reserve a right in a mark.’” Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, Opposition No. 91241032 10 1507 (TTAB 1993) (quoting Trademark Act Section 45, 15 U.S.C. § 1127, and citing Senate Judiciary Comm. Rep. on S. 1883, S. Rep. No. 515, 100th Cong., 2d Sess. 24- 25 (1988)). “[A]bsent other facts which adequately explain or outweigh the failure of an applicant to have any documents supportive of or bearing upon its claimed intent to use its mark in commerce, the absence of documentary evidence on the part of an applicant regarding such intent is sufficient” to establish that there was no bona fide intent to use the mark when the involved application was filed. Id. In determining the sufficiency of documentary evidence demonstrating bona fide intent, “the focus is on the entirety of the circumstances, as revealed by the evidence of record.” See Lane Ltd., 33 USPQ2d at 1355. By pointing to Applicant’s lack of documentary evidence to support its claim of bona fide intent in its application, Opposer has made a prima facie showing that there is no genuine dispute that Applicant lacked the requisite bona fide intent when the involved application was filed. See Commodore Electronics, 26 USPQ2d at 1507. Unless rebutted, that showing suffices to establish Opposer’s entitlement to summary judgment on the no bona fide intent to use claim. To raise a genuine issue of material fact to counter Opposer’s summary judgment showing, Applicant must point to specific evidence in the summary judgment record to explain or outweigh its lack of documentary evidence of bona fide intent, or which would otherwise establish that it had the requisite bona fide intent to use the mark when it filed the application. See id. Opposition No. 91241032 11 Applicant has failed to identify any such evidence here. Although Applicant alleges that it spent more than $20,000 “to protect and police the brand ‘REVOLVO’ in various jurisdictions around the world,” the only specific activities in connection with the mark that Applicant has identified are the filing of its now-withdrawn Benelux application and the involved United States application. The fact that Applicant filed its Benelux application and then relied upon that application to claim priority in its United States application does not support Applicant’s bona fide intent to use its mark in United States commerce as of the application filing date. See Person's Co. Ltd. v. Christman, 10 USPQ2d 1634, 1635 (TTAB 1989) (trademark rights are territorial). “If the filing and prosecution of a trademark application constituted 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.” Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1931 (TTAB 2009). In addition, Applicant has not shown that it is otherwise in the business of, or capable of marketing, the goods identified in its application. See Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008) (no bona fide intent found because there was no relevant business established). Further, by its assertion that it is postponing development, marketing and offering the goods for sale until it has obtained trademark rights in each jurisdiction in which it intends to sell the identified goods under the involved mark, Applicant is essentially conceding that it filed the involved application to reserve rights in the involved mark. See M.Z. Berger & Co., 114 USPQ2d at 1898. Opposition No. 91241032 12 Finally, we note that the above-captioned proceeding was commenced on May 8, 2018, fourteen months after the March 2, 2017 filing of the involved application. Any delay caused by this proceeding does not create a genuine dispute that Applicant had a bona fide intent to use the mark when it filed the application more than a year earlier. See L.C. Licensing v. Berman, 86 USPQ2d 1883, 1892 (TTAB 2008). Based on the foregoing, we find that Applicant has failed to rebut Opposer’s prima facie showing that Applicant did not have a bona fide intent to use the involved mark when it filed the involved application, and we therefore grant Opposer’s motion for summary judgment on its claim of lack of a bona fide intent to use. The opposition is sustained, judgment is entered against Applicant on the lack of bona fide intent to use claim only, and registration to Applicant is refused. III. Remaining claims are moot Because our entry of summary judgment on the lack of bona fide intent to use claim is dispositive of this case, we decline to reach the motion for summary judgment on Opposer’s likelihood of confusion claim. That claim and Opposer’s dilution claim, which was not at issue in the motion for summary judgment, are moot. See TBMP § 102.01 (2019) (the Board may exercise its discretion to decide only those claims which are necessary to dispose of a case).