Precedential No. 29: TTAB Dismisses Opposition to Section 1(b) Application, Ownership Is Not an Issue

PAVE: Promoting Awareness, Victim Empowerment filed a Section 1(b) application to register the mark SafeBAE for “Providing emotional counseling and emotional support services for victims of sexual violence.” Shael Norris opposed, claiming that she is the owner of the mark and therefore that the opposed application was void ab initio. The Board, however, ruled that a Section 1(b) applicant need not be the “owner” of the mark, but need only have a bona fide intention to use the mark. And so the Board dismissed the opposition. Shael Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880 (TTAB 2019) [precedential] (Opinion by Judge Thomas W. Wellington).

The parties agreed that the sole issue before the Board was “which party owns the mark.” However, “a claim that an applicant is not the rightful ‘owner’ of the applied-for mark is not available when the application is not based on use of the mark in commerce.”

Section 1(a) of the Act provides that “[t]he owner of a trademark used in commerce may request registration of its trademark.” [Emphasis supplied]. In the standard declaration for a use-based application, the applicant avers: “The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered. The mark is in use in commerce on or in connection with the goods/services in the application.” Thus, under Section 1(a), if the applicant is not the “owner” of the mark, the application is void ab initio.

On the other hand, under Section 1(b) of the Act, an applicant “who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark.” There is no statutory requirement that the filer of an intent-to-use application be the owner of the mark at the time of filing. The standard declaration for an intent-to-use application states that: “The signatory believes that the applicant is entitled to use the mark in commerce. The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the application.” [Emphasis supplied].

Therefore the Board found no statutory basis for opposer’s claim of non-ownership, and so it dismissed the opposition.

The Board observed that a Section 1(b) application may be challenged based on the lack of a bona fide intent to use the mark in commerce. “By analogy to non-ownership claims, where the application is based on intent to use under Section 1(b) of the Trademark Act, and two parties are claiming superior rights based on shared circumstances, the question is which entity or individual had the bona fide intent.” Here, however, opposer neither alleged or argued this issue, and although there was some evidence suggesting that applicant did have a bona fide intent to use the mark, the Board declined to consider the issue because it “cannot be confident that the parties have provided … a full record upon which to make the required findings.”

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TTABlog comment: So now what? Does the opposer seek judicial review by way of civil action, where it can bring up the lack-of-bona-fide intent issue?

PS: I note that when one is filling out a TEAS application, the first box to be filled out is “Owner of Mark.” Perhaps that should say “Applicant”?

BTW: that annoying term “applied-for-mark” appears again. A registration is being applied-for, not a mark. How about saying the “opposed mark” in this case.