Missing Cougar Co. v. Edgar Rice Burroughs, Inc.

We successfully represented Edgar Rice Burroughs, Inc. (ERB)--successor to the famous author of the Tarzan and John Carter of Mars stories--in overcoming an opposition to its application to register the mark JOHN CARTER OF MARS for a variety of toys and games. The opposer alleged that when ERB's application should be denied because ERB (i) lacked a bona fide intention to use the mark, and (ii) committed fraud on the USPTO by misrepresenting such intention to use. According to the opposer, ERB acted in bad faith by filing the subject application while ERB's prior application for the same mark for identical goods was still pending. The opposer pointed to language in the legislative history of the Trademark Law Revision Act of 1988 suggesting that the filing of successive applications to register the same mark for identical goods can be evidence that the applicant lacks a bona fide intention to use the mark and is instead merely seeking to reserve a valuable mark to the exclusion of others. The TTAB granted our motion for summary judgment on ERB's behalf, finding that there was ample evidence of ERB's bona fide intent, notably including ERB's entry into a major motion picture deal with Disney for the John Carter of Mars property two weeks before filing the application. We subsequently defeated the opposer's motion for reconsideration.