Société Des Produits Nestlé S.A. v. Taboada
Decision Date | 05 August 2020 |
Docket Number | 91232597 |
Court | Trademark Trial and Appeal Board |
Parties | Société des Produits Nestlé S.A. v. Cándido Viñuales Taboada |
Andrea Anderson and Amy J. Tindell of Holland & Hart LLP for Société des Produits Nestlé S.A.
Roberto Ledesma of Law Office of Roberto Ledesma for Cándido Viñuales Taboada.
Before Coggins, Hudis and Lebow, Administrative Trademark Judges.
Cándido Viñuales Taboada ("Applicant"), pursuant to an application filed on April 18, 2016 under Trademark Act Section 66(a), 15 U.S.C. § 1141f(a), [1] seeks registration on the Principal Register of the mark NESPORT (in standard characters) for:
Applicant denied the salient allegations of the Notice of Opposition in its Answer, [6]and asserted "affirmative defenses." However, they are not true affirmative defenses, but rather mere amplifications of Applicant's denials of Opposer's claims.
After the close of discovery, [7] Opposer moved for partial summary judgment on Count III of the Notice of Opposition, namely, Applicant's lack of a bona fide intent to use the NESPORT mark in commerce for the goods recited in his application.[8] The Board denied Opposer's motion, citing genuine disputes of material fact that could not be resolved on summary judgment, [9] and encouraged the parties to consider resolving the Opposition using the Board's accelerated case resolution procedure ("ACR").[10] The parties subsequently entered into an ACR stipulation, [11] the relevant portions of which are set out below:
The Board approved the parties' stipulation, and reset trial dates.[13] Following trial, the parties filed briefs on the case.
Trademark Act Section 66(a) is the statutory filing basis for the NESPORT application. Section 66(a) requires that, at the time of filing of the international application with the International Bureau ("IB") of the World Intellectual Property Organization ("WIPO"), an applicant requesting for extension of protection to the United States include a declaration of bona fide intention to use the mark in commerce. 15 U.S.C. §1141f(a). The declaration must specify that the applicant (or "holder"[14]) has a bona fide intention to use the mark in commerce on or in connection with the goods specified in the international application. Trademark Act Sections 45 and 60(5), 15 U.S.C. §§ 1127, 1141(5); see also Trademark Rules 2.33(e)(1), 2.34(a)(5), 37 C.F.R. §§ 2.33(e)(1), 2.34(a)(5).
The declaration also must include a statement that: the signatory is properly authorized to execute the declaration; the signatory believes the applicant/holder to be entitled to use the mark in commerce on or in connection with the goods specified in the international application; and to the best of his knowledge and belief, no other person, firm, corporation, association, or other legal entity has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. Trademark Act Sections 45 and 60(5); see also Trademark Rules 2.33(e)(2)-(4), 2.34(a)(5).
As noted by the Trademark Manual of Examining Procedure (TMEP) (October 2018):
The [United States Patent and Trademark Office ("USPTO")] … has provided the [International Bureau of the World Intellectual Property Organization ("IB")] … a [form] declaration of bona fide intention to use the mark in commerce for a trademark …, which is part of the official IB form for international applications and subsequent designations in which the United States is designated for an extension of protection (IB Form MM18). … The IB will ensure that the MM18 form is annexed to the international application or subsequent designation in which there is a request for extension of protection to the United States, that the wording of the declaration has not been altered, and that the document has been signed before forwarding the request for extension of protection to the USPTO. The IB does not send the verified statement to the USPTO. … The verified statement remains part of the international registration on file with the IB. Trademark Rule 2.33(e).
TMEP § 1904.01(c) (emphasis added). See also Wirecard AG v. Striatum Ventures B.V., 2020 U.S.P.Q.2d 10086, at *3 n.7 (TTAB 2020):
Under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), the holder of an international registration may file a request for extension of protection of that registration to the United States. An applicant who files such a request must declare its intention to use the mark in the United States, Section 66 of the Trademark Act, 15 U.S.C. § 1141f(a), and the resulting U.S. application is subject to examination and opposition, Section 68 of the Trademark Act, 15 U.S.C. § 1141h. Saddlesprings, Inc. v. Mad Croc Brands, Inc., 104 U.S.P.Q.2d 1948, 1950 (TTAB 2012).
As noted, Count III of the Notice of Opposition alleges Applicant's lack of bona fide intent to use the NESPORT mark in commerce in derogation of Trademark Act Section 1(b) rather than Trademark Act Section 66(a).[15] Both statutory provisions require a verified statement of bona fide intent at the time each such type of application is filed with USPTO. Citation of the incorrect statutory se...
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