M.Z. Berger & Co., Inc. v. Swatch Ag

787 F.3d 1368 (2015)

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Nature of the Case

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Facts

D manufactures, imports, and sells watches, clocks, and personal care products. D filed an intent-to-use application seeking to register the mark 'iWatch' for over thirty different goods, each of which belongs to one of three general categories: watches, clocks, and goods related to watches and clocks. D declared that it had a bona fide intention to use or use through a related company or licensee the mark in commerce on or in connection with the identified goods and/or services. The application was approved. Swatch (P) filed a Notice of Opposition on the basis that 'iWatch' is confusingly similar to its mark, 'Swatch.' Swatch later added a claim opposing the mark on the ground that D lacked a bona fide intent to use the mark in commerce at the time D filed the application. The TTAB considered the testimony of D's owner and CEO, Mermelstein. Mermelstein testified that D never intended for the mark to be used for any goods other than watches. When asked why the other related goods were identified in the application, the paralegal who filed the claim, Ms. Titera, claimed that the list was 'standard' and used to 'leave all doors open.' TTAB concluded that D lacked a genuine intent to use the mark on clocks and related goods. As for watches, the Board concluded that D failed to tell a consistent story about their intent at the time the application was filed. 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. D did not present any physical or documentary evidence relating to the iWatch mark beyond the images submitted to the PTO. P’s opposition was sustained and D appealed.