Swiss Grill Ltd., v. Wolf Steel Ltd., 215 USPQ2d 2001 (TTAB 2015)
In a precedential case decided on September 10, 2015, Swiss Grill Ltd. v. Wolf Steel Ltd., 215 U.S.P.Q.2d 2001 (TTAB 2015), the Trademark Trial and Appeal Board granted an opposition on the ground that the applicant, Wolf Steel, lacked a bona fide intent to use the SWISS GRILLS mark for “barbecue and outdoor grills” at the time the application was filed. This case follows the precedent set in a case decided by the Federal Circuit earlier this year, M.Z. Berger & Co. v. Swatch AG, 215 U.S.P.Q.2d 1892 (Fed. Cir. 2015).
The applicant was not able to produce any documents showing that it intended to sell or license the SWISS GRILLS mark in the United States. The fact that the “different” mark SWISS GRILL (without an S) was already in use in Canada was not considered evidence of the applicant’s intent to use the mark in the United States. There was also inconsistent testimony about the type of grill for which the mark would be used—conventional outdoor barbecue grills versus specialty grills. This seems like a lot of hair-splitting, but clients should be aware of the type of scrutiny that a determined opposer can bring to a case.
The applicant produced brochures and photos of grills that it had collected at a trade show in China—but this was not evidence of Wolf Steel’s intent to use the mark in the United States. Also, the fact that the applicant conducted a trademark search prior to filing did not constitute intent to use.
We do not know if this line of cases would affect the outcome in the event there were more varied goods or services, or multiple classes listed and some of the goods or services could be supported with proof of bona fide intent to use. As noted, the Swiss Grill case involved just two items, while the M.Z. Berger case involved over a dozen items, but all related to clocks and watches.
The bottom line is that applicants should file only for plausible goods or services, and it would be a good idea to document the intent to offer them in the United States with memos and documentary evidence such as business plans created and dated prior to the filing date.