USA Pro IP Limitedv.Courtaulds Textiles America Inc.

Trademark Trial and Appeal Board

Jun 16, 2015

No. 91214980 (T.T.A.B. Jun. 16, 2015)

JK Mailed: June 16, 2015

Opposition No. 91214980
USA Pro IP Limited
v.
Courtaulds Textiles America Inc.

Before Seeherman, Ritchie and Shaw.
Administrative Trademark Judges.

By the Board:

Courtaulds Textiles America Inc. (“Applicant”) filed an application on
November 14, 2012 to register the mark USAPRO (standard characters) for
“athletic apparel for women, namely, shirts, tank tops, sports bras, vests,
pants, shorts, jackets, and sweatshirts” in International Class 25, based on a
bona fide intent to use the mark in commerce pursuant to Trademark Act
Section 1(b).1
USA Pro IP Limited (“Opposer”) filed a notice of opposition on the ground
of lack of a bona fide intent to use the mark as of the application filing date,
alleging specifically:
Upon information and belief, as of the filing date for the Opposed
Application, Applicant lacked a bona fide intent to use the USAPRO

1 Application Serial No. 85778955.
United States Patent And Trademark Office
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition No. 91214980

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mark in connection with the goods in the Opposed Application. (Not. of
Opp., Para. 17)

In its answer, Applicant admitted that as of the filing date of its
application it had not used the mark (Ans., Para. 16), and denied the
allegation that as of the filing date it lacked a bona fide intent to use the
mark (Ans., Para. 17).
This case now comes up on Applicant’s motion for summary judgment
with respect to its bona fide intent to use the mark in commerce. The motion
is fully briefed.
Analysis
Summary judgment is appropriate where the movant demonstrates that
there is no genuine dispute as to any material fact, and that it is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a). A party asserting that a
fact cannot be true or is genuinely disputed must support its assertion by
either 1) citing to particular parts of materials in the record, or 2) showing
that the materials cited do not establish the absence or presence of a genuine
dispute, or that an adverse party cannot produce admissible evidence to
support the fact. See Fed. R. Civ. P. 56(c). A factual dispute is genuine if, on
the evidence of record, a reasonable fact finder could resolve the matter in
favor of the non-moving party. See Opryland USA Inc. v. Great Am. Music
Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme
Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir.
Opposition No. 91214980

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1992). The party seeking judgment in its favor carries the burden of proof.
See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).
Evidence on summary judgment must be viewed in a light most favorable
to the non-movant, and all justifiable inferences are to be drawn in the non-
movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472.
The Board may not resolve genuine disputes as to material facts; it may only
ascertain whether genuine disputes as to material facts exist. See Lloyd’s
Food Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1544. See
TBMP § 528.01 (2014), and cases cited therein.
Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), states:
a person who has a bona fide intention, under circumstances
showing the good faith of such person, to use a trademark in
commerce may request registration of its trademark on the
principal register …

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 such as 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. See
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503,
1506 n.7 (TTAB 1993). The determination of whether an applicant has a
bona fide intention to use the mark in commerce is made on a case-by-case
basis considering the totality of circumstances, and requires objective
evidence of intent. Although the evidentiary bar is not high, the
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circumstances must indicate that the intent to use was firm and not merely
an intent to reserve a right in the mark. See M. Z. Berger & Co. v. Swatch
AG, _ F.2d _, _ USPQ2d _, No. 14-1219 (Fed. Cir. June 4, 2015); Boston Red
Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008); Lane
Ltd. v. Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994) (“the
determination of whether an applicant has a bona fide intention to use the
mark in commerce is to be a fair, objective determination based on all the
circumstances”).
The Board considers the evidence as a whole, and any clear
interrelationships that exist between the several pieces of evidence of record,
to determine whether the evidence, in its totality, establishes a bona fide
intent to use the mark for the identified goods. Cf. West Florida Seafood Inc.
v. Jet Restaurants Inc., 31 USPQ2d 1660, 1663 (Fed. Cir. 1994). The
evidence necessary to support a finding of a bona fide intent to use will differ
in each case, depending on the circumstances. See Honda Motor Co. v.
Winkelmann, 90 USPQ2d 1660, 1664 (TTAB 2009).
To prevail on summary judgment, Applicant must demonstrate that there
is no genuine dispute as to any material fact and that it had a bona fide
intent to use the mark USAPRO on “athletic apparel for women, namely,
shirts, tank tops, sports bras, vests, pants, shorts, jackets, and sweatshirts”
as of November 14, 2012, the filing date of its application.
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Applicant submitted twenty-four exhibits, eighteen of which it submitted
under seal (Exhibits 1, and 3 through 19); moreover, Applicant submitted a
brief in which entire sections are under seal. Furthermore, Opposer
submitted several portions of its brief, and its Exhibit I, under seal.
Consequently, in this order we must refer to certain arguments and exhibits
in general terms.2
Opposer raises objections to Applicant’s evidence. Thus, we initially
address these objections.
Applicant introduced its twenty-four exhibits - which it states in its brief
are documents it produced during discovery - under the declaration of its
outside counsel, Daniel P. Hope.3 Opposer contends that Applicant’s evidence
is “entirely inadmissible” (Opposer’s brief, p. 7) on the basis that Mr. Hope is
Applicant’s outside counsel and lacks the necessary personal knowledge to
either authenticate the documents, or to provide the “creation dates of certain
documents that do not have such dates in their intrinsic contents” (Opposer’s
brief, p. 7-8).

2 The non-confidential exhibits are as follows: Applicant’s Exhibits 20 and 21 consist
of the pleadings filed in this proceeding; it was not necessary to submit them with
the motion for summary judgment because they are of record. Exhibit 22 consists of
copies of papers from a prior application filed by Applicant. Exhibits 23 and 24
consist of copies of papers filed in Applicant’s opposed application; however, the
opposed application is already of record by operation of Trademark Rule 2.122(b)(1).
3 In his declaration in support of both the motion and reply brief, Mr. Hope declares
that he represents “Applicant, Apple Inc. in the above captioned proceedings.” The
Board presumes these to be typographical errors, as nothing in the record indicates
a connection between Applicant and Apple, Inc.
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Mr. Hope declares as follows, in the first paragraph of his declaration in
support of Applicant’s motion and reply brief:
... I have personal knowledge of the documents referenced herein and the
underlying facts surrounding said documents and could competently
testify thereto if called as a witness herein.

In its reply brief, Applicant states that “[A]pplicant’s counsel’s declaration
merely describes the exhibits supporting Applicant’s motion as ‘true and
accurate copies’ and provides identifying information such as the document
title, Bates range and date, if available” (Applicant’s reply brief, p. 3).
Although we cannot view Mr. Hope’s declaration as providing information
as to the creation or creation dates of the documents, that information was
otherwise provided by Applicant in its answers to interrogatories. In
Interrogatory No. 20, Opposer specifically asked Applicant to identify the
dates that certain documents were created, and in response Applicant
provided the dates on which Bates-numbered documents comprising Exhibits
1, 3, 8-11 and 14 were created. In view of the corroborative nature of the
Hope declaration and Applicant’s interrogatory response, we have accepted
the creation dates of Exhibits 1, 3, 8-11 and 14.
Opposer also argues that “all documents where Mr. Hope swears a
creation date should not be considered” (Opposer’s brief, p. 10) because Mr.
Hope provided a creation date for Exhibit 16 that contradicts the date ranges
on the exhibit itself. Indeed, Mr. Hope states that this document is “dated
March 5, 2012” (Hope decl., para. 17), whereas the exhibit bears dates
different from that date. However, because we are relying on the declaration
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in support of the motion only as identification for the documents, we do not
find this date discrepancy, alone, to be a basis to exclude Exhibit 16, and we
certainly do not find it to be a basis to exclude all exhibits to which Mr. Hope
provided a date.
We now turn to the specific exhibits.
Emails
Exhibit 4, filed under seal, identified as “an email regarding USAPRO
from Natalie Paul to Mark Redler, dated October 27, 2010” (Hope decl., para.
5), is a communication between employees of Applicant discussing the idea of
using the mark “USA PRO” on certain categories of women’s garments, and
includes photographs of various types of apparel.
Exhibit 5, filed under seal, identified as “email correspondence regarding
USAPRO between Tony Jarvis, Lisa Pearson and Mark Redler, dated
between December 16, 2010 and January 6, 2011” (Hope decl., para. 6),
consists of communications between employees of Applicant. The mark
USAPRO is referenced in a December 16, 2010 email, and the emails discuss
scheduling a meeting to discuss a plan regarding a launch into the United
States market, including timing of the launch.
Exhibit 6, filed under seal, identified as “email correspondence regarding
‘USAPRO Market Research Questionnaire’ between Jacques Moric and Lisa
Pearson, dated between March 22, 2011 and April 11, 2011” (Hope decl.,
para. 7), consists of communications between Applicant’s employees in
London and Mr. Moric, located in New York, regarding “a marketing plan for
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USAPRO,” questions to be included in “a questionnaire for our market
research on USAPRO,” “results of the Market Research Questionnaire,” and
Mr. Moric’s plan to go to specific stores “to talk to their customers.”
Exhibit 15, filed under seal, identified as “email correspondence
regarding ‘USA Pro samples’ between Mark Redler and a China-based
manufacturer dated between December 5, 2011 and March 5, 2012” (Hope
decl., para. 16), refers to obtaining samples of heatseal labels and samples of
garments that have the heatseal of the mark USAPRO applied, and discusses
the specific placement of the heatseal on certain garments identified by style
number and other garment characteristics.
Opposer contends that Applicant did not explain the connection that
some of the individuals on the emails have to Applicant. However, Applicant
submitted with its reply brief its initial disclosures that it had served seven
months before it filed its summary judgment motion; in the disclosures
Applicant identified Mr. Redler and Mr. Moric, set forth their full titles, and
identified them as likely to have discoverable information regarding
Applicant’s intent to use USAPRO in the United States. Ms. Paul, Mr. Jarvis
and Ms. Pearson are sufficiently identified in the emails themselves as
persons employed by or affiliated with Applicant.
Opposer also contends that the emails are not sufficiently
contemporaneous with the filing date of Applicant’s application to be
probative. However, the cases on which Opposer relies refer to documentary
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evidence that was created after the filing of the application. Opposer cites
Lane Ltd. v. Jackson Int’l Trading Co., supra, wherein the Board found that
correspondence that occurred nine to eleven months after the application
filing date was sufficiently contemporaneous to corroborate the application
declaration of a bona fide intent to use the mark in commerce. Opposer also
cites Boston Red Sox Baseball Club LP v. Sherman, supra; however, in that
case the evidence found not to be contemporaneous with the application filing
date was from over two years after the filing date, and was also after the
notice of opposition was amended to assert a claim of lack of bona fide intent
to use. Here, the emails at issue took place prior to the filing of the
applications. Accordingly, there is no cause for concern that Applicant’s
intent to use the mark came after the filing of the application. Further, the
earliest of the emails is dated October 27, 2010, two years prior to the filing
date. Such a period of time, between undertaking research directed to
launching the goods bearing the mark in the United States, to the filing of an
intent-to-use application, is reasonable. Thus, the emails are probative of
Applicant’s intent to use the mark in commerce in the United States.
Market Research
Exhibit 3, filed under seal, is identified as “a document titled ‘USAPRO
Market Research,’ which was created on or around October 21, 2010” (Hope
decl., para. 4). As noted above, Applicant attested to the date of this
document in response to Interrogatory No. 20. The document is a
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questionnaire on which appear different versions of the mark USAPRO,
standing alone and in photographs.
Opposer objects to Exhibit 3 on the basis that the document has no
connection to the United States or to women’s athletic apparel. Indeed, the
document does not include content indicating that it was designed or used for
market research relevant to the United States. However, we consider the
document as part of whether the evidence, in its totality, establishes a bona
fide intent to use the mark for the identified goods. See West Florida Seafood
Inc. v. Jet Restaurants Inc., supra.
Exhibits 7 through 11, filed under seal, are each identified as “a
document titled ‘Research Analysis’ … which was created on or around April
4, 2011” (Hope decl., para. 8 – 12). As noted above, in Interrogatory No. 20,
Applicant attested to this date for Exhibits 8 through 11.4 The research
analysis consists of the specific responses obtained from a 25-question survey
of several hundred individuals in five states in the United States, regarding,
inter alia, their apparel wearing and purchasing preferences.
Opposer objects that these exhibits are vague and not connected to the
United States market or to the application. On the contrary, the documents
show that detailed and specific information was asked of hundreds of
respondents in the United States, and that specific data was derived
therefrom. Opposer’s objection is overruled.
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Drawings of label and heatseal
Exhibits 12 and 13, filed under seal, respectively identified as
“‘Description: USA PRO womens (sic) woven jacquard label,’ dated July 6,
2011” and “‘Description: USA PRO raised rubber heatseal,’ dated July 6,
2011” (Hope decl. para. 13-14), are black-and-white and color drawings of
varying versions of the USAPRO mark. Exhibit 13 also includes a color
photograph of pieces of fabric to which the mark has been applied.
Opposer contends that the exhibits do not show the goods or the markets
for which they were intended. While that is correct, they may be considered
as part of the totality of the evidence going toward whether Applicant had a
bona fide intent to use the mark in commerce at the time it filed its
application. Moreover, the emails discussed above, as well as the marketing
plan and sketches (discussed below) corroborate the timing and probative
nature of the labels and heatseals.
Marketing Plan
Exhibit 14, filed under seal, is identified as “a document titled ‘USAPRO
Marketing Plan,’ which was created on or around November 22, 2011” (Hope
decl., para. 15). As noted above, Applicant attested to this date in response to
Interrogatory No. 20. The document comprises twelve slides on which the
USAPRO mark appears on the title slide, and on various other slides.

4 Opposer’s Interrogatory No. 20 did not ask about Exhibit 7. Inasmuch as Exhibit 7
is, in substance, the same as Exhibits 8 through 11, and is also dated April 4, 2011,
we accept that it was created at the same time.
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Certain slides include points which reference the U.S. market and/or identify
specific retail stores that are located in and do business in the United States.
Opposer argues that there is no evidence that Applicant took any
material, concrete steps to act on this marketing plan. However, “[A]n
applicant may safely make (a statement of intent to use a mark) in its
original application without having taken concrete steps to create and
introduce a new product, provided that in fact it intends to use the mark.”
See Swatch AG (Swatch SA) (Swatch Ltd.), 108 USPQ2d 1463, 1477, n. 91
(TTAB 2013), aff’d _ F.2d _, _ USPQ2d _, No. 14-1219 (Fed. Cir. June 4,
2015), (quoting S. Rep. No. 100-515, at 24 (1988), reprinted in USTA, “The
Trademark Law Revision Act of 1988” 176 (1989) (“USTA”). We have
therefore considered the marketing plan as part of Applicant’s evidence of its
intent to use the mark.
Sketches
Exhibit 16, filed under seal, identified as “a document titled ‘Womens
Fitness Range,’ dated March 5, 2012” (Hope decl., para. 17), consists of a
series of pages on which appears, inter alia, “USA PRO,” as well as sketches
of and accompanying specifications for various articles of clothing.
As discussed above, we have not excluded this document because of an
inconsistency between the date ranges on the document itself and the date
given by Mr. Hope in identifying the document. Opposer also argues that
nothing about the exhibit connects it to the United States market. The
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document does not make literal reference to the United States, although it
does include the mark and details regarding the type of goods identified in
the application. We consider this document as part of the totality of the
evidence.
Other Exhibits
Exhibit 17, filed under seal, identified as “a document titled ‘Pro Sleeve
Bra’” (Hope decl., para. 18), is a drawing of an article of apparel on which the
USAPRO mark is depicted, and Exhibit 18, filed under seal, identified as “a
document titled ‘USAPRO/Key considerations’” (Hope decl., para. 19), lists
categories of considerations for brand identity, competitor companies, retail
stores that do business in the United States, and various versions of the
USAPRO mark alone and in connection with various articles of clothing.
Exhibits 17 and 18 do not include a date on their face, nor does the Hope
declaration provide a date; Opposer argues that, for this reason, they are
unreliable. As to substance, Opposer argues that nothing about these
exhibits connects them to the United States market. Although Opposer’s
points are well-taken, we have considered the exhibits as part of the totality
of the evidence.
Letter
Exhibit 19, filed under seal, is identified as “a letter from Jacques Moric
to Hanro USA Inc., dated May 30, 2014” (Hope decl., para. 20).
Opposer argues that this cannot constitute evidence of intent to use the
mark as of the filing date because it is dated after commencement of this
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opposition. The letter is dated approximately eighteen months after the
application filing date. Although this letter, without other evidence, would be
insufficient for Applicant to establish on summary judgment that Applicant
had a bona fide intent to use the mark in commerce as the time it filed the
application eighteen months earlier, the letter has probative value when
considered with the totality of the evidence.
Opposer’s allegations of bad faith
Finally, we have considered Opposer’s contention that Applicant’s filing
and eventual abandonment of prior intent-to-use USPTO applications to
register the mark USAPRO indicate a “pattern of wrongful behavior” and
“bad faith effort to block (Opposer)” (Opposer’s brief, p. 22). We have
considered Opposer’s associated contention of “a global campaign to prevent
(Opposer) from registering its own USA PRO mark in the U.S. and
elsewhere” (Opposer’s brief, p. 21) and its assertion that the issue of
Applicant’s rights is “being litigated in various forums around the world”
(Opposer’s brief, p. 23).
Applicant filed one earlier application to register the mark USAPRO for
International Class 25 goods, and such goods were identical to those in the
opposed application.5 The existence of only one abandoned application to
register the mark for the same goods does not support a finding that
Applicant has engaged in a pattern of bad faith conduct. Cf. L’Oreal S.A. v.

5 This was application Serial No. 77685544, filed on March 6, 2009, and expressly
abandoned on September 17, 2013, after no statement of use was filed.
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Marcon, 102 USPQ2d 1434 (TTAB 2012) (applicant demonstrated pattern of
filing applications to register various well-known marks with the intention to
trade off of opposer’s famous marks). Similarly, that Applicant filed
applications for goods in other international classes does not evidence a
pattern of bad faith conduct in filing the opposed application. Moreover, to
the extent the record with respect to disputes in other countries, raises
considerations, these are not within the Board’s jurisdiction and do not bear
on the determination of registrability of the mark in the United States. More
to the point, the earlier applications, and allegations of disputes in other
countries, are insufficient to raise a genuine dispute with respect to
Applicant’s intent to use the mark in the United States.
Findings
Analyzing the evidence as a whole as to what it demonstrates, and
considering the corroborative interrelationships between pieces of evidence,
we find that the totality of the evidence establishes that Applicant had a bona
fide intent to use the mark in commerce in the United States for the
identified goods as of the application filing date.
For example, Exhibits 7 through 11 show a degree of detail in the
questions asked, the responses provided by consumers in the United States,
and the type of goods covered in the research, that is sufficient to render
them probative of Applicant’s bona fide intent to use the mark in the United
States for the identified goods. Also probative of such intent are several of
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the emails (Exhibits 4 - 6, 15) among Applicant’s principals, or between
Applicant’s employees and others, regarding a launch in the United States
market, and market research to be done in the United States and directed to
consumers in the United States regarding their use of and preference for
particular apparel.
Applicant’s marketing plan (Exhibit 14) sets forth brief but sufficient
details of a strategy to launch its branded goods in the United States; the
plan includes specific points regarding apparel companies with a market
share in the United States, direct references to considerations relevant to the
United States market, and references to contacting certain types of retail
store personnel in the United States.
Applicant’s evidence showing label and heatseal designs (Exhibits 12 –
13), as well as evidence of its contacts with manufacturers (Exhibit 15),
constitute credible, objective corroboration of its statement in the application
that it had a bona fide intention to use the mark in commerce on the apparel
goods identified in the application as of the filing date. Lane Ltd. v. Jackson
Int’l Trading Co., 33 USPQ2d at 1355.
Having considered the totality of the evidence, and the arguments
presented by both parties, on the record before us on summary judgment, we
find that Applicant has carried its burden of demonstrating that there is no
genuine dispute with respect to any material facts, and that it has shown
that it had the requisite bona fide intent to use the mark USAPRO in
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commerce in the United States on “athletic apparel for women, namely,
shirts, tank tops, sports bras, vests, pants, shorts, jackets, and sweatshirts”
as of the November 14, 2012 filing date of its application. Opposer’s
arguments with respect to the various exhibits fail to raise a genuine dispute
that would preclude entry of summary judgment.
In view of these findings, Applicant’s motion for summary judgment with
respect to Opposer’s claim that Applicant lacked a bona fide intent to use the
mark in commerce as of the filing date of the opposed application is granted.
Because the claim that Applicant lacked a bona fide intent to use its
mark is the sole ground for the opposition, in view of our granting Applicant’s
motion for summary judgment regarding this ground, the opposition is
dismissed.