PRL USA Holdings, Inc.v.Rich C. Young

Trademark Trial and Appeal Board

Oct 16, 2013

No. 91206799 (T.T.A.B. Oct. 16, 2013)

COHEN Mailed: October 16, 2013

Opposition No. 91206799

PRL USA Holdings, Inc.

v.

Rich C. Young

Before Cataldo, Taylor, and Masiello,
Administrative Trademark Judges.

By the Board:

Rich C. Young (“applicant”) seeks to register the mark
THE POLO CLUB OF AMERICA USA USA and design, depicted below
(“applicant’s mark”):

for “shirts, polo shirts, tee shirts,” in International
Class 25.1
PRL USA Holdings, Inc. (“opposer”) filed its notice of
opposition to the registration of applicant’s mark on the

1 Application Serial No. 85484346 was filed November 30, 2011
under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), based on
an assertion of a bona fide intent to use the mark in commerce.

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Oppo

grou
subm
the

cons
Moti

a cl
comm

2 In
nume
LAUR
icon
conn

3 Th
file
of t
sition N

nds of l
itted it
notice o
This ca
1. Oppo
(fil
appl
bona
2. Oppo
clai
2013
Each mo
ider eac
on to am
Opposer
aim of l
erce. A

support
rous regi
EN and/or
ography,
ection wi
e Board’s
d Novembe
he notice
o. 91206

ikelihoo
s answer
f opposi
se now c
ser’s mo
ed July
ication
fide in
ser’s mo
m of no
).
tion has
h motion
end
seeks t
ack of b
pplicant

of these
stration
the des
includin
th its m
May 17,
r 19, 20
of oppo
799

d of con
,3 gener
tion.
omes up
tion to
5, 2013)
is void
tent to
tion for
bona fid
been fu
in turn
o amend
ona fide
has opp

grounds
s contain
ign a
g the wor
arks.
2013 ord
12, as a
sition.

2
fusion a
ally den
on the f
amend it
to add
ab initi
use; and
summary
e intent
lly brie
.
the noti
intent
osed the
opposer h
ing, inte
nd allege
ds, ‘USA’
er treate
general d
See Fed.

nd dilu
ying the
ollowing
s notice
a claim
o based

judgmen
to use
fed. Th
ce of op
to use
motion
as claime
r alia,
s that it
and ‘Am
d applica
enial of
R. Civ.

tion.2 A
allegat
motion
of oppo
that app
on a lac
t based
(filed J
e Board
positio
the mark
.
d owners
POLO, POL
uses “A
erica,’”
nt’s “an
the alle
P. 8(b)(3

pplicant
ions of
s:
sition
licant’s
k of
on its
uly 5,
will
n to add
in
hip of
O RALPH
merican
in
swer,”
gations
).

Opposition No. 91206799

3

Amendments to pleadings in inter partes proceedings
before the Board are governed by Fed. R. Civ. P. 15, which
is made applicable to Board proceedings by Trademark Rule
2.116(a). See also TBMP § 507.01. Fed. R. Civ. P. 15(a)
governs amendments before trial. Pursuant to Fed. R. Civ.
P. 15(a)(2), where, as here, a party may not amend its
pleading as a matter of course,
…a party may amend its pleading only with the
opposing party's written consent or the court's
leave. The court should freely give leave when
justice so requires.

The Board liberally grants leave to amend pleadings at any
stage of a proceeding when justice so requires, unless
entry of the proposed amendment would violate settled law
or be prejudicial to the rights of the adverse party or
parties. See TBMP § 507.02.
The timing of the motion for leave to amend plays a
large role in the Board’s determination of whether the
adverse party would be prejudiced by allowance of the
proposed amendment. See, e.g., United States Olympic
Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1222 (TTAB
1993)(applicant not prejudiced because proceeding still in
pre-trial phase); Focus 21 International Inc. v. Pola Kasei
Kogyo Kabushiki Kaisha, 22 USPQ2d 1316, 1318 (TTAB 1992)
(motion to amend filed prior to opening of petitioner’s
Opposition No. 91206799

4

testimony period permitted); Caron Corp. v. Helena
Rubenstein, Inc., 193 USPQ 113 (TTAB 1976)(neither party had
yet taken testimony); Mack Trucks, Inc. v. Monroe Auto
Equip. Co., 182 USPQ 511, 512 (TTAB 1974)(applicant would
not be unduly prejudiced since no testimony has yet been
taken); TBMP § 507.02(a). For example, the Board generally
will grant such motions when the proceedings are still in
the pre-trial stage. See, e.g., Cool-Ray, Inc. v. Eye Care,
Inc., 183 USPQ 618, 621 (TTAB 1974).
On review of the parties’ arguments,4 the Board finds no
evidence of undue delay by opposer in filing its motion to
amend its pleading. Opposer alleges its motion is predicated
on information learned during discovery, and there are no
allegations that opposer unduly delayed filing its motion
after learning the information in discovery.
Additionally, it appears unlikely that applicant will be
prejudiced by allowance of the amendment. Trial has not yet
begun and additional discovery does not appear to be
necessary since neither party has requested additional

4 In applicant’s response to opposer’s motion to amend its notice
of opposition, applicant appears to also move to amend some of
his discovery responses. The parties have a duty to correct or
supplement their discovery responses. See Fed. R. Civ. P. 26(e).
To the extent applicant’s request may be deemed a motion to amend
his discovery responses, the motion is unnecessary. Applicant is
under a duty to correct or supplement his discovery responses and
may do so under his own initiative.
Opposition No. 91206799

5

discovery. Indeed, opposer is seeking summary judgment on
the additional ground of lack of bona fide intent to use in
the amended pleading.
In view of the foregoing, opposer’s motion to amend is
hereby GRANTED. The amended notice of opposition included in
opposer’s motion shall be treated as opposer’s operative
pleading in this case.
Motion for Summary Judgment
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine disputes as to
material facts, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). In deciding
motions for summary judgment, the Board must follow the
well-established principles that, in considering the
propriety of summary judgment, all evidence must be viewed
in a light favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant's favor. The
Board may not resolve disputes of material fact; it may
only ascertain whether such disputes are present. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc.,
961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
Opposition No. 91206799

6

When the moving party has supported its motion with
sufficient evidence which, if unopposed, indicates there is
no genuine dispute of material fact, the burden then shifts
to the non-moving party to demonstrate the existence of a
genuine dispute of material fact to be resolved at trial.
Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1540
(TTAB 2009). The non-moving party, however, may not rest on
the mere allegations of its pleadings and assertions, but
must designate specific portions of the record or produce
additional evidence showing the existence of a genuine
dispute as to a material fact for trial. Consequently,
factual assertions without evidentiary support are
insufficient to defend against a motion for summary
judgment. See Hornblower & Weeks Inc. v. Hornblower & Weeks
Inc., 60 USPQ2d 1733, 1739 (TTAB 2001); and S & L
Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1225
(TTAB 1987). For purposes of this motion, we deem all new
allegations in the amended notice of opposition to be denied
and a matter of dispute, unless the parties’ submissions on
this motion resolve such dispute by means of sufficient
evidence.
We turn first to the issue of standing, a threshold
issue that must be proven by a plaintiff in every inter
partes case. See Ritchie v. Simpson, 170 F.3d 1092, 50
Opposition No. 91206799

7

USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance Committee,
Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.
Cir. 1987). The Board finds that there is no genuine
dispute of material fact concerning opposer’s standing.
Opposer submitted a status and title copy of its pleaded
registrations with its amended notice of opposition which
sufficiently establishes its standing to bring this
proceeding. See Vital Pharmaceuticals Inc. v. Kronholm, 99
USPQ2d 1708, 1709 (TTAB 2011); Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1408 (TTAB 2010). Moreover,
applicant has not disputed opposer’s standing.
Trademark Act Section 1(b), 15 U.S.C. Section 1051(b),
states that "a person who has a bona fide intention, under
circumstances showing the good faith of such person, to use
a trademark in commerce" may apply for registration of the
mark. An applicant's bona fide intent to use a mark must
reflect an intention that is firm, though it may be
contingent on the outcome of an event (that is, market
research or product testing) and must reflect an intention
to use the mark “'in the ordinary course of trade, ... and
not ... merely to reserve a right in a mark.'" Commodore
Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503
(TTAB 1993) (quoting Trademark Act Section 45, 15 U.S.C.
Section 1127, and citing Senate Judiciary Comm. Rep. on S.
Opposition No. 91206799

8

1883, S. Rep. No. 515, 100th Cong., 2d Sess. 24-25 (1988)).
A determination of whether an applicant has a bona fide
intention to use the mark in commerce is an objective
determination based on all the circumstances. Boston Red
Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB
2008); see also Aktieselskabet AF 12. November 2001 v. Fame
Jeans Inc., 86 USPQ2d 1527, 1537-38 (D.C. Cir. 2008)(“Here,
Congress made clear that a ‘bona fide intent to use’ also
involves an objective standard by specifying there must be
‘circumstances showing . . . good faith.’ Thus, an opposer
may defeat a trademark application for lack of bona fide
intent by proving the applicant did not actually intend to
use the mark in commerce or by proving the circumstances at
the time of filing did not demonstrate that intent.”). In
determining the sufficiency of documentary evidence
demonstrating bona fide intent, the Board has held that the
Trademark Act does not expressly impose "any specific
requirement as to the contemporaneousness of an applicant's
documentary evidence corroborating its claim of bona fide
intention. Rather, the focus is on the entirety of the
circumstances, as revealed by the evidence of record." Lane
Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351,
1355 (TTAB 1994).
Opposition No. 91206799

9

As a general rule, the factual question of intent is
unsuited to disposition on summary judgment. See
Copelands’ Enterprises, Inc. v. CNV, Inc., 945 F.2d 1563,
20 USPQ2d 1295 (Fed. Cir. 1991). Nonetheless, one way an
opposer can establish its prima facie case of no bona fide
intent is by proving that applicant has no documentary
evidence to support its allegation in the application of
its claimed bona fide intent to use the mark in commerce as
of the application filing date. Saul Zaentz Co. v. Bumb,
95 USPQ2d 1723, 1727 (TTAB 2010). Where there is no
evidence of an applicant's bona fide intent to use the mark
at issue on the claimed goods or services, entry of summary
judgment on a claim that the applicant had no bona fide
intent to use the mark in commerce when he filed his
involved application may be warranted. See Honda Motor Co.
v. Winkelmann, 90 USPQ2d 1660 (TTAB 2009).
In support of its motion for summary judgment, opposer
has submitted copies of its discovery requests and
applicant’s discovery responses. Opposer alleges, inter
alia, that based on applicant’s discovery responses,
applicant did not have the required bona fide intent to use
his mark at the time of filing his application.
Specifically, opposer refers to applicant’s responses to
Opposition No. 91206799

10

interrogatories nos. 1, 3, 5-6, and 8-9.5 Those
interrogatories ask, in general, that applicant indentify,
inter alia, the products to be sold under applicant’s mark,
applicant’s general revenue and/or goods sold (without
regard to whether the revenue or goods are in association
with applicant’s mark) in past years, and any market
research conducted with respect to applicant’s mark.
Applicant’s response to each of these interrogatories
is that he is in an “intention to use status” and that he
does not have “any business planning yet.” Opposer also

5 Those interrogatories are:

Interrogatory 1: Identify all Products offered or
intended to be offered for sale by Applicant bearing
Applicant’s Mark.

Interrogatory No. 3: Identify all Persons responsible
for inventing, creating, manufacturing, designing,
and/or revising any Products that bear or will bear
Applicant’s Mark.

Interrogatory No. 5: Identify Applicant’s total
revenues from the sale and/or licensing of goods in
2011 and 2012.

Interrogatory No. 6: Identify the goods manufactured,
sold and/or distributed by Applicant in 2011 and 2012.

Interrogatory No. 8: Identify all market research
relating to Applicant’s Mark or any product and/or
service marketed or proposed to be marketed under
Applicant’s Mark.

Interrogatory No. 9: Identify all Persons with whom
Applicant has entered or intends to enter into a license,
contract or other agreement, including but not limited to
coexistence agreements, regarding use of Applicant’s Mark.

Opposition No. 91206799

11

refers to applicant’s lack of document production in
response to document requests 3-5, 7 and 86 wherein opposer
asks applicant, inter alia, to produce documents regarding
his agreements, proposals or negotiations to sell and/or
license his products under applicant’s mark, manufacturing
of goods with applicant’s mark, and the types of product
lines to be sold under applicant’s mark. Applicant responds
to those document requests by indicating no documents exist
apparently because he is in an “intention to use status” and

6 Those document requests are:

Document Request No. 3: All Documents concerning
agreements, proposals or negotiations with any Person to
license, produce, sell, offer for sale and/or distribute
products bearing Applicant’s Mark.

Document Request No. 4: All Documents concerning the
manufacturing and/or planned manufacturing, including
orders and/or samples, of Products that bear or will bear
Applicant’s Mark.

Document Request No. 5: All Documents concerning
assertions, claims or protests by third parties that
Applicant’s Mark, or any other of Applicant’s designs,
trademarks, or products, constitute(d) an infringement, or
possible or potential infringement.

Document Request No. 7: Documents sufficient to identify
each different product and/or product line sold or intended
to be sold by Applicant under Applicant’s Mark.

Document Request No. 8: Documents sufficient to identify
the scope and operation of Applicant’s business, including
but not limited to Documents showing total revenues and
sales for the past three years and Documents showing
distributors, manufacturers, and retailers with which
Applicant does business.

Opposition No. 91206799

12

does not “have any business planning yet” or that he does
not “have business activities yet.”
Opposer argues that these responses are evidence that
applicant “has not yet engaged in any planning or business
activities related to Applicant’s Mark beyond his
preparation of the Application”; that applicant is not
involved in any manufacturing, sale, licensing or
distribution of any goods whatsoever; and that, therefore,
applicant’s application is void ab initio because applicant
lacked the requisite bona fide intent to use applicant’s
mark at the time the application was filed.
In response to the motion for summary judgment,
applicant argues, inter alia, that his interrogatory
responses and lack of document production are a result of
being in an “intention to use status” and not yet being
open for business; that if the “Board approve[s]
[applicant’s mark for registration], Applicant will made
[sic] the Tee shirts, Polo shirts with [applicant’s mark
and] . . . will distribute through EBay and Amazon systems
throughout [the] whole U.S.A.”; that he will have all the
documentary evidence required such as “business activities,
business planning, identify or conceive which the mark
intent to use [sic]” after the Board approves applicant’s
Opposition No. 91206799

13

mark; and that therefore, his discovery responses
demonstrate his bona fide intent to use applicant’s mark.
The record demonstrates that applicant has no
documentary evidence of business plans, marketing or
promotional activities, nor any discussions with
manufacturers or licensees which could substantiate his
claim of a bona fide intent to use applicant’s mark in
commerce as of the filing date of the application. Cf. Lane
Ltd. v. Jackson, 33 USPQ2d 1351. Applicant has failed to
produce any evidence of any current business, whether
related to the goods listed in applicant’s application or
otherwise. His response to the motion for summary judgment
does not include any objective evidence of “circumstances
showing… good faith,” and does not support a finding that
his intent to use is bona fide.
The Board has “repeatedly found a lack of bona fide
intent to use a mark by individuals who lack the
demonstrated capacity to produce the goods identified in the
application.” Swatch AG (Swatch SA)(Swatch Ltd.) v. M.Z.
Berger & Co., Inc., ___ USPQ2d ___, (TTAB, Opposition No.
91187092, September 30, 2013); see L’Oreal S.A. v. Marcon,
102 USPQ2d 1434 (TTAB 2012); Saul Zaentz Co., 95 USPQ2d at
1726-27; Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629,
1643 (TTAB 2007).
Opposition No. 91206799

14

On this record, and upon careful consideration of the
parties’ arguments and the evidence submitted, we find that
applicant’s intent at the time he filed his application was
“merely to reserve a right in the mark” in case it was later
approved for registration by the USPTO; and that applicant
would only at some unspecified future time begin developing
a business. This is not a bona fide intent to use the mark
in commerce as defined by Section 45 of the Trademark Act on
the identified goods. See Swatch AG v. M.Z. Berger, ___
USPQ2d ___ (TTAB 2013). Applicant’s mere statements of
intent to use applicant’s mark and his denial that he lacked
a bona fide intent is not adequate evidence of a bona fide
intent to use a mark. See Saul Zaentz Co., 95 USPQ2d at
1726-27. Because there is no documentary evidence of
applicant’s bona fide intent to use applicant’s mark in
commerce to identify his goods at the time he filed his
application, and applicant has not come forth with any
evidence to explain his lack of documentary evidence, the
Board cannot conclude that applicant had a bona fide intent
to use his mark at the time of filing the application.
In view thereof, opposer has established that there is
no genuine dispute of material fact as to applicant’s lack
of bona fide intent to use applicant’s mark as of the filing
date of the application. Accordingly, opposer’s motion for
Opposition No. 91206799

15

summary judgment is granted on its claim of no bona fide
intent to use the mark in commerce. The opposition is
sustained under Trademark Act Section 1(b) and application
Serial No. 85484346 is refused registration.