TTAB Decisions and Developments

Jane Shay Wald
Irell & Manella LLP

Opposer’s MSJ Prevailed Where Applicant Applied On Bona Fide Intent, But Failed (No Evidence Supplied)

The Board granted Opposer’s motion for summary judgment, sustaining the opposition. It thereby refused registration, agreeing with Opposer there was no genuine dispute of material fact that Applicant lacked the requisite intent to use his mark when he filed the application. The Board found Applicant had not rebutted Opposer’s prima facie case with any evidence bearing on his intent to use, so that Opposer was entitled to judgment as a matter of law.

The circumstances were as follows. Applicant applied on an intent-to-use basis to register MIRACLE ON 35th STREET for certain paper goods and clothing. Opposer filed an opposition on the basis of its 15 registrations that included the world MIRACLE for apparel.