TTAB - Trademark Trial and Appeal Board - *1 CLAIROL INCORPORATED v. COMPAGNIE D'EDITIONS ET DE PROPAGANDE DU JOURNAL LA VIE CLAIRE-CEVIC S.A. Opposition No. 80,657 September 17, 1991

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





Opposition No. 80,657

September 17, 1991


Before Rooney, Hanak and Hohein






Opinion by Rooney






 This case comes up on a motion, filed by opposer, for summary judgment or, alternatively, for an order requiring applicant to respond to discovery. Both parties have briefed the motion.



 The basis for the motion is opposer's contention that applicant, whose application was filed on May 7, 1987, under Section 44(e) based on French Registration No. 1,346,207, does not have a bona fide intention to use the mark in the United States and did not have such an intention at the time of filing the application. It is opposer's position that there was an implicit requirement of a bona fide intention to use under Section 44 of the Trademark Act before the enactment of the Trademark Law Revision Act of 1988 (TLRA) and that, in any event, there is authority for the proposition that the TLRA has retroactive effect respecting applications pending after the effective date of the Act. Opposer cited the case of Eldon Industries, Inc. v. Rubbermaid, Inc., 735 F.Supp. 786 (N.D.Ill.1990) in which, it is asserted, the court applied the TLRA retroactively to find that a registrant who had obtained a registration on the Supplemental Register pre-TLRA need not have had lawful use in commerce for the year preceding its application for registration. The court in Eldon, states opposer, relied on Bradley v. School Board of Richmond, 416 U.S. 696, 711 94 S.Ct. 2006, 2016 (1974) in which it was held that "a court is to apply the law in effect at the time it renders its decision unless doing so would result in manifest injustice or there is statutory direction or legislative history to the contrary". The district court, argues opposer, agreed with Eldon's argument that there was no such manifest injustice or legislative history forbidding retroactive application of the TLRA amendment and that such amendment should therefore govern the outcome. Although it is not explicitly set forth in the motion, it appears that opposer takes the position that, in the absence of a bona fide intent to use at the filing date thereof, applicant's application is void ab initio. [FN1]



 Opposer's motion for judgment is supported by a number of exhibits and, in connection with its alternative motion for discovery, opposer filed applicant's response to opposer's second set of interrogatories and requests for production of documents in which applicant objected to the relevance of the inquiries. Opposer asserts that its discovery requests seek information about applicant's bona fide intent to use the mark in the United States when it filed its application and that, if its summary judgment motion is denied, applicant should be ordered to fully respond thereto.



  *2 In response to the motion, applicant filed a brief and the affidavit of its Administrative Director, M. Jean-Marie Degorre who attests that applicant "has a present intention of using the mark LA VIE CLAIRE in the United States for its line of natural products, and has had this intention since at least 1985." M. Degorre then reiterates that in 1985 and 1986 he was personally in charge of efforts to introduce the LA VIE CLAIRE natural product line into the United States and that he worked with a potential United States distributor during that period; that negotiations were unsuccessful because the potential distributor demanded that the recipes for these products, which he found not suitable to the American taste, be changed which applicant refused to do; that, among other negotiations, applicant has entered into an exclusive distribution agreement with a Canadian company from which it hopes to extend the market into the United States. Applicant argues that it is clear from the foregoing that it has a present intention and has always intended, since at least 1985, to use its mark in the United States.



 Summary judgment may be entered in cases in which it has been established that there are no genuine issues of material fact in dispute and judgment may be rendered as a matter of law. See Sweats Fashions v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.Cir.1987).



 With respect to the retroactivity of the requirements of TLRA, it is noted that several cases have dealt with this issue.



 There is an extensive discussion of retroactivity in connection with the TLRA amendment to Section 43(a) in Alpo Petfoods Inc. v. Ralston Purina Co., 16 USPQ2d 1081 (D.C.Cir.1990) fn. 6. There the court noted that:

   (A)t least from 1974 to 1989, courts presumed that 'a court is to apply the law in effect at the time it renders its decision, unless doing so would result in manifest injustice or there is statutory direction or legislative history to the contrary.' Bradley v. School Bd., 416 U.S. 696, 711 (1974); see, e.g., Ralis v. RFE/RL, Inc., 770 F.2d 1121, 1126-31 (D.C.Cir.1985) (applying Bradley analysis but determining that 1984 amendment to Age Discrimination in Employment Act should not retroactively apply). Recent Supreme Court cases, however, have undercut the Bradley principle. These decisions appear to be reviving the older presumption against retroactively applying statutes. In Bowen v. Georgetown University Hospital, 488 U.S. 204 (1988), a decision that struck down a retroactive rulemaking by the Department of Health and Human Services, the Court unanimously stated: 'Retroactivity is not favored in the law. Thus, congressional enactments and administrative rules will not be construed to have retroactive effect unless their language requires this result.' Id. at 208 (emphasis added). Last Term, in a statutory interpretation case, Kaiser Aluminum & Chemical Corp. v. Bonjorno, 110 S.Ct. 1570 (1990), the Court recognized that Georgetown Hospital diverges from Bradley, but avoided 'reconcil(ing) the two lines of precedent ... because under either view, where the congressional intent is clear, it governs." Id. at 1577; see also id. at 1579 (Scalia, J., concurring) (urging the Court to overrule Bradley and a predecessor decision). Because the Georgetown Hospital rule seems more faithful to the older decisions that are being interpreted in the retroactivity debate, see Id. at 1579-82 (Scalia, J., concurring), we rely on that rule here. See Georgetown Univ. Hosp. v. Bowen, 821 F.2d 750, 758 (D.C.Cir.1987) ("substantive legislation will not be given retroactive effect 'unless such be "the unequivocal and inflexible import of the [statutory] terms, and the manifest intention of the legislature" ' ") (quoting pre-Bradley Supreme Court decisions), aff'd, 488 U.S. 204 (1988).

    *3 The 1988 Act says only when the Lanham Act amendments 'become effective'; it does not say whether they apply to conduct preceding the specified date or to litigation pending on that date. 15 U.S.C. § 1051 note. This ambiguous provision does not require us to apply amended section 43(a) in this case. Cf. Eldon Indus. v. Rubbermaid, Inc., 735 F.Supp. 786, 792-94 (N.D.Ill.1990) (pre-Bonjorno, post-Georgetown Hospital case) (district court, applying Bradley presumption, compared 1988 Act with original Lanham Act and 1975 amendment (both of which included explicit bans on retroactive application), found congressional intent on 1988 Act comparatively unclear, and thus decided to apply 1988 Act retroactively). Since the 1988 Act does not overcome the presumption of nonretroactivity, see Georgetown Hospital, 488 U.S. at 208, we apply here the pre-1988 version of section 43(a).



 Of particular interest, since it expresses the view of our reviewing court, is the case of In re Mother Tucker's Food Experience (Canada) Inc., 925 F.2d 1402, 17 USPQ2d 1795 (Fed.Cir.1991) fn. 4, in which the court in discussing the fact that Section 8 of the Trademark Act was amended "after the events here at issue" said "(H)owever, we apply the statute as it existed at the time Mother Tucker's declarations of use were filed; ... See e.g. Sargisson v. United States, 913 F.2d 918, 922-23 (Fed.Cir.1990) (the general rule that retroactivity of statutory change is not presumed)."



 In view of the presumption of nonretroactivity in the absence of a clear legislative intent to the contrary and since the 1988 amendment to the Trademark Act does not manifest such an intent, we find opposer's arguments that the bona fide intent to use amendment to Section 44 should apply retroactively to be unpersuasive.



 With respect to opposer's contention that the Trademark Act, prior to the enactment of the TLRA, contained an implicit requirement of a bona fide intent to use at the time of filing of an application under Section 44, we disagree. While it may be as a practical matter that, in the act of filing an application in the United States, the vast majority of foreign entities have formed an intention to use the marks in this country, that is not the same as a requirement that one filing under Section 44 have such an intention, with concomitant sanctions if it can be shown that the intent had not taken form as of the filing date of the application to register. In support of its motion, opposer has cited, as persuasive authority, the USTA Trademark Review Commission Report and Recommendations on the United States Trademark System and the Lanham Act, September 1987, to wit,

   Section 44 applications should be required to allege a bona fide intent to use the mark in commerce. This modest requirement is consistent with our treaty obligations. Moreover, Section 44 applications now imply an intention to use, for their registrations may be canceled because of abandonment due to nonuse for two consecutive years after registration.

*4 We do not believe that this language supports opposer's position on this question because it does not in any way indicate a belief that filers under the pre-TLRA Section 44 were required to have formed a bona fide intention to use the mark for which they were seeking registration at the time the application was filed. "Implying" such an intention on the part of an applicant under Section 44 merely suggests that the act of filing manifests an intention on the part of the filer to use the mark within a reasonable time. See Sinclair v. Deb Chemical Proprietaries Ltd., 137 USPQ 161 (TTAB 1963). Once a registration issues under Section 44, it becomes subject to the same rules as any other registration issued in the United States and unless use commences within two years of the date of issuance, the registration is subject to a petition for cancellation on the ground of abandonment. See Oromeccanica, Inc. v. Ottmar Botzenhardt G.m.b.H. & Co. KG, 223 USPQ 59 (TTAB 1983). Opposer has cited no case law expressing its view or otherwise supporting its position that there was an implicit "requirement" of a bona fide intent to use under Section 44 before the adoption of the Trademark Law Revision Act of 1988. In fact, Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984), which discussed in great detail the requirements of use in connection with Section 44 of the Trademark Act (pre-TLRA), made no mention of any requirement of a bona fide intention to use on the part of filers of applications under the provisions thereof.



 Opposer's motion for judgment is denied. Moreover, we find that opposer's allegations regarding applicant's lack of a bona fide intent to use its mark in the United States fail to state a claim upon which relief can be granted. The opposition is, therefore, dismissed as it relates to this claim. [FN2]



 In view of the foregoing, opposer's alternative motion to order applicant to answer its discovery requests which relate to this issue is denied.



 Trial dates are reset as shown in the attached trial order.



L.E. Rooney



E.W. Hanak



G.D. Hohein



Members, Trademark Trial and Appeal Board



FN1. The opposition was filed on the ground that applicant's mark, as used on its goods, is likely to cause confusion with a number of marks owned and registered by opposer. The opposition was later amended to include the allegation regarding the absence of applicant's intent to use the mark in the United States.



FN2. The parties are reminded that this is an "interlocutory" order. The time for judicial review of this order will expire two months from the date of issuance of a final decision in the opposition proceeding.



September 17, 1991



William James Kopacz



83 avenue Foch



Paris 75116, France



Alfred T. Lee



Milgrim Thomajan & Lee



53 Wall Street



New York, New York 10005-2815



  *5 In accordance with the Trademark Rules of Practice, trial dates are set as indicated below. IN EACH INSTANCE, a copy of the transcript of testimony together with copies of documentary exhibits, must be served on the adverse party WITHIN THIRTY DAYS after completion of the taking of testimony. Rule 2.125.




THE PERIOD FOR DISCOVERY TO CLOSE:                                  xxxxxxxx    

Testimony period for party in position of plaintiff to close       October 28,  

 (opening thirty days prior thereto)                                 1991      

Testimony period for party in position of defendant to close      December 27,  

 (opening thirty days prior thereto)                                 1991      

Rebuttal testimony period to close (opening fifteen days prior    February 10,  

 thereto)                                                            1992      


 Briefs shall be filed in accordance with Rule 2.128(a) and (b).



 An oral hearing will be set only upon request filed as provided by Rule 2.129.



L.E. Rooney






Trademark Trial and Appeal Board


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