Opposition sustained due to lack of good-faith intent to use

United States of America

In The Saul Zaentz Company d/b/a Tolkien Enterprises v Bumb (Opposition 91156452, June 28 2010), the Trademark Trial and Appeal Board (TTAB) has held that applicant Joseph M Bumb’s intent-to-use application for the mark MITHRIL for use with jewellery was void ab initio because Bumb lacked the requisite good-faith intention to use the mark in commerce as of the application date.

This case involved an application for the name of a mythical metal in JRR Tolkien’s The Hobbit and the Lord of the Rings trilogy. The Saul Zaentz Company (doing business as Tolkien Enterprises), the owner of the rights to the books, filed an opposition and claimed, among other things, there was a lack of proper intent to use the mark. The TTAB agreed and dismissed the application.

Section 1(b) of the Lanham Act (15 USC §1051(b)) allows applications based on a good-faith intention to use a mark in commerce “under circumstances showing the good faith of such person”. The TTAB has previously interpreted the requirement of a good-faith intent to use the mark in commerce to be demonstrated with objective evidence, and not merely subjective assertions by the applicant. The TTAB has also previously held that such use must be in the ordinary course of trade, and that the application must not merely be made to reserve a right in a mark.

To challenge an applicant’s intent to use a mark in an opposition, the “[opponent] has the initial burden of demonstrating by a preponderance of the evidence that [the] applicant lacked a bona fide intent to use the mark on the identified goods”. One way for an opponent to establish a prima facie case that the applicant lacked a good-faith intent to use the mark is by proving that the “applicant has no documentary evidence to support its allegation in the application of its clamed bona fide intent to use the mark in commerce as of the application filing date”.

In the present case, the applicant, Bumb, makes and sells custom design jewellery and operates a store at a flea market where he buys and sells jewellery, collectibles and memorabilia, among a range of other products. Bumb’s intent-to-use application for the mark MITHRIL was filed on September 12 2001. Prior to the filing of his application, on August 14 2001, he had registered the domain names 'mithrilsilver.com', 'mithrilsilver.net' and 'mithrilsilver.org', but never operated a website under these domain names. It was undisputed that the term 'mithril' originated from the literary works of JRR Tolkien and refers to a mythical precious metal.

Tolkien Enterprises has acquired the worldwide rights to the Tolkien works. It has also acquired and licensed the use of various trademarks based on the names, objects, places and events described in Tolkien's works. Tolkien Enterprises holds a number of trademarks based on Tolkien's works for use with jewellery, and licenses the use of the mark MITHRIL MINIATURES for the marketing of collectible miniature figurines depicting characters from Tolkien's works.

The TTAB found that Tolkien Enterprises had established a prima facie case that:

  • Bumb's intentions were, at most, merely to reserve a right in the term 'mithril'; and
  • Bumb lacked the requisite good-faith intention to use the mark in commerce as of the application date.

The TTAB relied on evidence demonstrating that Bumb:

  • had a 'concept' for what he intended, but did not have any specific items of jewellery in mind for MITHRIL;
  • “hoped to develop” a market for Mithril jewellery, but did not have specific marketing plans aside from “designing a website”, which never occurred;
  • did not have prices planned for Mithril jewellery;
  • did not have any plans to sell the jewellery at retail outlets;
  • admitted that he had never made a piece of jewellery that he planned to use as a prototype for Mithril jewellery;
  • did not have any plans for a particular product line, but “just the opportunity to create something in the future”; and
  • admitted that “[a]t this point, [he] was just applying for the trademark or first the domain and then cover the trademark in lieu of something growing. No intent.”

Bumb did not provide any documentary evidence to overcome Tolkien Enterprises' prima facie case. Instead, Bumb argued that Tolkien Enterprises' claim of no good-faith intent was unfairly based on Bumb's voluntary compliance with a cease and desist letter regarding his use of the MITHRIL mark. The TTAB rejected Bumb's argument because the cease and desist letter was sent to him after the filing of the trademark application and could not affect intent at the time of filing.

Based on these finding, the TTAB sustained the opposition on the grounds that Bumb lacked the good-faith intent to use the mark when he filed his intent-to-use application to register the mark. Therefore, the application was void ab initio.

This case provides a good example of the fact that mere intent is not enough and the intent must be backed up by plans - actual deeds are not necessary, but specific plans are required to show a proper intent.

Ethan Horwitz and Wan Chieh (Jenny) Lee, King & Spalding LLP, New York

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