Federal Circuit Confirms M.Z. Berger Out of Time to Prove Intent to Use iWATCH Mark

The Federal Circuit has upheld the Trademark Trial and Appeal Board’s ruling that watchmaker M.Z. Berger did not provide sufficient evidence to show a “bona fide intent” to use the mark iWATCH and could not register same. M.Z. Berger & Co., Inc. v. Swatch AG (Swatch SA) (Swatch Ltd.), Case No. 14-1219 (Fed. Cir. June 5, 2015).

Swiss watchmaker giant Swatch Group Ltd. filed an opposition against an application to register the mark iWATCH in 2008, alleging that the applicant, M.Z. Berger & Co., Inc., did not have an intent to use the mark and filed its application merely to reserve the right to use it. The TTAB held that Berger’s documentary evidence, namely, a trademark search conducted days before filing, an internal email summarizing a paralegal’s discussion with the examining attorney, and drawings of the proposed iWatch product, did not demonstrate a bona fide intent to use the mark. The TTAB concluded that the proposed product drawings were “prosecution-driven,” because Berger prepared them in response to the examining attorney’s request for more information on how it intended to use the mark. Testimony from Berger’s CEO further supported the TTAB’s conclusions about Berger’s lack of intent, specifically, testimony that Berger only intended to use the mark in connection with watches at the time of filing and not the clocks or personal care products listed in the application, and that three years after the filing date Berger still had not yet decided what type of watch it would sell with the iWatch mark, or what features the watch would have.

On appeal, the Federal Circuit agreed with the TTAB’s findings, and confirmed that an opposer may challenge an application by alleging that the applicant lacks a bona fide intent to use the mark. The TTAB has long held that this is the case, but this precedential decision marks the first time the Federal Circuit has done so.

Apple Inc. was noticeably absent from this proceeding, given the recent release of the Apple Watch and its aggressive stance against i-formative marks. Apple did not join Swatch’s opposition to the iWATCH application, but did file three separate oppositions against i POP and i POPWATCH applications filed by Swatch.