For any baseball fans already preparing to capitalize when their favorite team wins their next World Series game, you may strike out before getting up to bat at the Trademark Trial and Appeal Board ("TTAB") in the United States Patent and Trademark Office ("USPTO"). In a recent precedential decision, the TTAB found that "a mere hope that an alleged condition precedent to using [a] mark – the Chicago White Sox winning the World Series – would occur someday" is insufficient to show bona fide intent-to-use.

William Yedor filed an intent-to-use application on February 26, 2016 for the mark MIRACLE ON 35TH STREET for "paper goods and printed matter, namely, posters, photographs, lithographs, post cards" in Class 16 and "clothing, namely, T-shirts, sweatshirts, caps, jackets" in Class 25. A&H Sportswear Co., Inc. opposed this application on likelihood of confusion and dilution by blurring grounds based on their numerous MIRACLE-formative registrations for apparel goods in Class 25. A&H Sportswear moved for summary judgment on their claims.

The TTAB granted A&H Sportswear's motion for summary judgment, finding that Yedor failed to produce objective evidence of his bona fide intent-to-use the mark on the covered goods.

"The evidentiary bar for showing bona fide intent to use is not high," the TTAB emphasized, but "more is required than a mere subjective belief" and "objective evidence must indicate an intention to use the mark that is firm and demonstrable."

Yedor stated that he "intends to sell T-shirts, owns the domain name, has one shirt design, gave friends and family a 'prototype T-shirt' in 2005, and plans to build a website in the event the Chicago White Sox win the World Series," but only produced one image of a prototype T-shirt he designed in 2005, eleven years prior to his application's filing date.

The TTAB found this evidence unpersuasive and insufficient, choosing instead to itemize all the evidence Yedor failed to produce:

  • "no other product he has ever planned to offer under his mark;
  • "no class of purchasers to whom he has marketed or sold, or intends to market or sell his products;
  • "no documents that show use of, or steps toward using, his mark on any products, or that show advertising, promotions, media, marketing plans, business plans or packaging materials or expenditures;
  • "[no] documents identifying any outlets, distributors or resellers through which he intended to offer or offers his goods;
  • "no documentation of, inter alia, any business or marketing plan to offer or sell his products in connection with his mark, any prospective purchasers, or any websites to display his products."

Accordingly, given "the eleven-year time span and the absence of record evidence of any later activities evidencing Applicant's use or preparation to use its mark," the TTAB held that no genuine issue of material fact existed that would preclude summary judgment for A&H Sportswear. Yedor's intent to use the mark dating back in 2005 when the White Sox last won the World Series did not carry forward to his filing date in 2016 because it was nothing more than a "speculative and purely contingent plan, dependent on a future event that might or might not occur in the future."

This decision reinforces the need for applicants to maintain pre-filing documentation of steps they have undertaken to commence use of an applied-for mark within a reasonable time period after their filing date and includes a helpful outline of what those documents could be to satisfy the burden of proof.

The case is A&H Sportswear Co., Inc. v. Yedor, Opposition No. 91235843 (Order, March 29, 2019).

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