Automated Summary
Key Facts
Hermilo Tamez Salazar sought to register the CLOROTEC mark for electrolysis cell equipment in Class 9, based on a June 10, 2010 use-based application claiming first use May 27, 2010. The Clorox Company opposed, asserting priority of use and lack of bona fide use in commerce. Applicant's interrogatory responses confirmed no sales of marked goods in the United States as of the filing date. The Board found no genuine dispute that applicant did not make bona fide use of the mark in commerce as of the filing date, granted summary judgment on the no bona fide use claim, and refused registration.
Issues
- The Board examined whether applicant Hermilo Tamez Salazar made bona fide use of his CLOROTEC and design mark in commerce as of the filing date of his use-based trademark application (June 10, 2010). The applicant argued that website advertising, shipment of parts, and occasional sales constituted use in commerce, but the Board found no actual sale or transport of finished goods bearing the mark in commerce as of the filing date. The Board held that mere advertising or shipment of parts for goods does not constitute bona fide use under the Trademark Act.
- The Board addressed whether The Clorox Company had standing to oppose the CLOROTEC trademark application. The Board found that opposer established standing by demonstrating its registered CLOROX marks were valid and subsisting, creating a reasonable belief of damage from applicant's registration. Applicant did not contest standing or file a counterclaim to cancel opposer's registrations.
Holdings
The Board granted the opposer's motion for summary judgment on the claim of lack of bona fide use in commerce as of the filing date of the applicant's use-based application. The opposition was sustained on this claim, the applicant's application was found void ab initio as a matter of law, and registration was refused because the applicant did not make bona fide use of the CLOROTEC mark in commerce as of the filing date of the application. The Board determined that mere website depiction, advertising, or shipment of parts to a manufacturer in Mexico did not constitute bona fide use in commerce under the Trademark Act.
Remedies
The Board granted opposer's motion for summary judgment regarding the claim of lack of bona fide use as of the filing date of applicant's use-based application. The opposition was sustained on this claim, applicant's application was declared void ab initio as a matter of law, and registration to applicant was refused. Because the Board refused registration based on the lack of bona fide use, it did not need to reach the opposer's additional claim of priority and likelihood of confusion.
Legal Principles
The Board applied the Trademark Act's definition of 'use in commerce' requiring bona fide use in the ordinary course of trade, not merely to reserve rights. For goods, this requires actual sale or transportation in commerce. Mere advertising or promotion without actual sale/transportation is insufficient. Transportation of goods from manufacturer to trademark owner is not use in commerce. Registration of marks not meeting use requirements is void ab initio. The opponent satisfied its burden of establishing no genuine dispute of material fact regarding lack of bona fide use, triggering summary judgment where the burden shifts to the non-moving party to demonstrate a genuine dispute. All evidence is viewed favorably to the non-movant.
Precedent Name
- Old Tyme Foods, Inc. v. Roundy's, Inc.
- Syngenta Crop Protection, Inv. v. Bio-Check, LLC
- Avakoff v. Southern Pac. Co.
- Lloyd's Food Products, Inc. v. Eli's, Inc.
- Buti v. Perosa S.R.L.
- Aycock Engineering, Inc. v. Airflite, Inc.
- General Healthcare Ltd. v. Qashat
Cited Statute
Trademark Act
Judge Name
- Judge Wellington
- Judge Bergsman
- Judge Kuhlke
Passage Text
- we find that opposer has satisfied its burden of setting forth a prima facie showing that there are no genuine disputes of material fact remaining for trial and that it is entitled to judgment as a matter of law as to its claim that applicant had not made bona fide use of its mark in commerce as of the filing date of applicant's use-based application.
- "The term 'use in commerce' means the bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark." 15 U.S.C. § 1127. Furthermore, a trademark is in use in commerce on goods when "(A) it is placed in any manner on the goods or their containers or the displays associated therewith ... or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce."
- Based upon the record before us and applicable law, we find that there are no genuine disputes of material fact that opposer has established its standing to bring this opposition proceeding and that there was no bona fide use of applicant's mark in commerce at the time applicant filed his use-based application. Accordingly, opposer's motion for summary judgment as to its asserted claim of lack of bona fide use is GRANTED, the opposition is sustained as to this claim, applicant's application is void ab initio, as a matter of law, and registration to applicant is refused.