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November 1, 2015 Vol. 70 No. 19 Back to Bulletin Main Page

UNITED STATES: TTAB Ruling Highlights Importance of Getting One’s Story Straight before Filing

In a precedential decision under the Trademark Trial and Appeal Board’s (Board) Alternative Case Resolution (ACR) Procedure, the Board sustained an opposition for the registration of the trademark SWISS GRILLS for barbeques and outdoor grills on the grounds that (a) Wolf Steel Ltd. (applicant) lacked a bona fide intent to use the mark for the products identified in its application, and (b) the use of the applicant’s mark would be likely to cause confusion with the mark used by Swiss Grill Ltd. (opposer). Swiss Grill Ltd., John Hartwig, Christopher Hartwig and Matthew Hartwig v. Wolf Steel, Ltd., Opposition No. 91206589 (Sept. 10, 2015) [precedential].

The applicant sought registration of the SWISS GRILLS mark for barbeques and outdoor grills in Class 11. The opposer subsequently filed its own application to register the mark SWISS GRILL and design. Opposition proceedings commenced, along with the requisite discovery requests and responses.

This was not the first time the applicant (a Canadian company) and the opposer (a UK company) had gone head-to-head over the trademarks at issue. Not only were the parties former business partners, but prior to their filings with the United States Patent and Trademark Office (USPTO), each had filed its own UK trademark application for the same marks, with the applicant eventually with-drawing its application.

In this case, the applicant simply failed to establish a bona fide intent to use the SWISS GRILLS mark in U.S. commerce because the applicant submitted virtually no evidence of its intent. In fact, rather than produce evidence that would show it planned to sell barbeques and outdoor grills under the filed-for mark, the applicant’s interrogatory responses contradicted its initial filing.

The Board found that, while the applicant had been using the mark in Canada for traditional outdoor grills, which comported with the applicant’s initial filing, its interrogatory responses indicated that the applicant intended to use the mark to sell something entirely different—a “European specialty product” (characterized as an indoor cooking apparatus). “To be blunt,” the Board stated, “the record as a whole reveals that the Applicant is unable to get its story straight.”

Rather than bolstering its application, the applicant’s new claims only served to “call into question the credibility of even its subjective claim to have had a bona fide intent to use the SWISS GRILLS mark in the United States,” under Section 1(b). Further, the documentary evidence the applicant produced highlighted its facially inconsistent claims, which the Board deemed “woefully deficient” in showing a bona fide intent to use the mark.

On the issue of likelihood of confusion, the applicant admitted that its mark would likely cause confusion with the opposer’s mark, under Section 2(d). The Board noted that it agreed, despite any purported differences between outdoor grills and indoor specialty grilling products. Finally, the applicant did not introduce any evidence of its use of the mark SWISS GRILLS in the United States before its filing date, and the opposer established that it had begun using its SWISS GRILL and design mark in commerce in 2010, more than a year before the applicant’s filing.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association