The Saul Zaentz Company dba Tolkien Enterprisesv.Joseph M. Bumb

Trademark Trial and Appeal Board

Jun 28, 2010

No. 91156452 (T.T.A.B. Jun. 28, 2010)

Mailed:
6/28/10

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Saul Zaentz Company dba Tolkien Enterprises
v.
Joseph M. Bumb
_____

Opposition No. 91156452
to application Serial No. 780836861

1 In addition to the present opposition proceeding involving
applicant’s application to register the MITHRIL mark for jewelry,
the parties are involved in two other opposition proceedings.
Opposition No. 91156518 involves applicant’s September 12, 2001
application Serial No. 78083685 for registration of the mark LOTR
(for jewelry). Combined Opposition No. 91170589 involves
applicant’s September 23, 2001 application Serial No. 78085108
for registration of the mark MIDDLE EARTH JEWELRY (for jewelry),
and his September 23, 2001 application Serial No. 78085111 for
registration of the mark ARAGORN (for jewelry).
Finding there to be common issues of law and fact in the
three oppositions involving the four applications, the Board
consolidated the three proceedings in orders dated July 23, 2004,
January 24, 2007 and February 9, 2007, with the present MITHRIL
opposition serving as the parent case. The cases have proceeded
as consolidated cases for purposes of discovery, trial and
briefing.
However, we deem it appropriate for purposes of final
decision to decide the three cases separately, in separate
opinions. Although the three cases share common legal and
factual issues which warranted consolidation for purposes of
discovery, trial and briefing, the issues and evidence are not
identical in the three cases. In the interest of clarity, each
of the three cases warrants its own opinion at final decision.
We note as well that applicant has consistently opposed the
consolidation of these cases out of his concern that the
consolidation would result in a prejudicial commingling and
confusion of the evidence and our findings in each of the cases,
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91156452
2
_____

Carole F. Barrett, Blake J. Lawit and Sarah J. Givan of
Howard Rice et al. for The Saul Zaentz Company dba Tolkien
Enterprises.

Joseph M. Bumb, pro se.
_____

Before Grendel, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Introduction.
This opposition proceeding involves the famous series
of fantasy literary works by J.R.R. Tolkien set in his
imaginary world of Middle Earth (“the Tolkien works”). The
books include The Fellowship of the Ring, The Two Towers,
and The Return of the King (the “Lord of the Rings”

especially in the present MITHRIL case. For example, at page 2
of his brief, applicant asserts:

The fact is, Applicant has always maintained an
intent to use the mark MITHRIL, and any claim by
SZC to the contrary is based on Applicant’s
statements regarding the other marks. It is for
this reason that Applicant vigorously opposed a
consolidation of these matters, and it is for this
reason that Applicant prays that the Board will
take these facts into consideration when rendering
its decision.

We assure applicant that we have considered the evidence in
each case independently and we are deciding each of the cases,
including this MITHRIL case, based solely on the evidence
pertinent to each case. Our issuance of separate opinions in
these cases should further allay applicant’s concerns on this
issue.

Opposition No. 91156452
3
trilogy), and its prequel, The Hobbit. In The Hobbit, the
hero Bilbo Baggins, a hobbit (a smaller relative of humans),
goes on a journey across Middle Earth during which he
discovers the dangerous Ring of Power. The sequel “Lord of
the Rings” trilogy is the story of the perilous journey
across Middle Earth of the hobbit hero Frodo Baggins and his
companions to destroy the Ring of Power and defeat the
armies of the evil wizard Saruman and the dark lord Sauron.2
Millions of copies of the Tolkien works have been sold
in the United States since their first publication in the
1950’s. In a 2008 Harris poll, the Tolkien works together
ranked as the third most popular book of all time among
American readers, trailing only The Bible and Gone With the
Wind.3
On September 12, 2001, Joseph M. Bumb (“applicant”)
filed an application (Serial No. 78083686) seeking
registration on the Principal Register of the mark MITHRIL
for goods identified in the application as “jewelry, namely,
rings, bracelets, pendants, charms, necklaces, earrings,
pins, tie pins and tie clasps, brooches, cufflinks, money
clips, all made of precious metal and alloyed precious
metal.” The application is based on applicant’s allegation

2 Undisputed evidence establishing these and other facts relating
to the plot and characters in the Tolkien works appears
throughout the record.

3 Drotos depo. at 46-48, 207-208; Imhoff depo. at 39-40.
Opposition No. 91156452
4
of a bona fide intention to use the mark in commerce, under
Trademark Act Section 1(b), 15 U.S.C. §1051(b).
The Saul Zaentz Company dba Tolkien Enterprises
(“opposer”) filed a notice of opposition to applicant’s
application for registration of the MITHRIL mark. In its
amended notice of opposition, opposer alleged, in pertinent
part, (a) that it owns various trademarks based on
characters, places, things and events described in the
Tolkien works, and that these marks include the mark
MITHRIL; (b) that applicant lacked the requisite bona fide
intent to use the MITHRIL mark in commerce at the time he
filed the application, rendering the application void ab
initio under Trademark Act Section 1(b), 15 U.S.C. §1051(b);
and (c) that opposer is the prior user of the mark MITHRIL,
that applicant’s use of the MITHRIL mark he seeks to
register is likely to cause confusion with opposer’s
previously-used MITHRIL mark, and that registration of
applicant’s mark therefore is barred under Trademark Act
Section 2(d), 15 U.S.C. §1052(d).4
Applicant answered the amended notice of opposition by
denying the salient allegations thereof.
Opposer submitted evidence at trial; applicant did not.
The case is fully briefed.

4 Opposer also alleged a dilution claim, but has specifically
withdrawn that claim in its brief. (Opposer’s brief at 23, n.4.)
We give it no further consideration.
Opposition No. 91156452
5
After careful consideration of all of the evidence of
record and all of the arguments of the parties (including
evidence and arguments not specifically discussed in this
opinion), we sustain the opposition on the ground that
applicant lacked the requisite bona fide intent to use the
MITHRIL mark in commerce when he filed his intent-to-use
application to register the mark, rendering the application
void ab initio under Trademark Act Section 1(b), 15 U.S.C.
§1051(b).5

The Evidence of Record.
By rule, the evidence of record includes the file of
applicant’s opposed MITHRIL application. Trademark Rule
2.122(b)(1), 37 C.F.R. §2.122(b)(1).
In addition, opposer submitted testimony and other
evidence at trial, including the following which we deem to
be the most pertinent to our findings and conclusions in
this case:6

5 Because we find that opposer has established its standing and
its Section 1(b) ground of opposition to registration of
applicant’s mark, we need not and do not reach opposer’s pleaded
Section 2(d) ground of opposition. See Research In Motion Ltd.
v. NBOR Corp., 92 USPQ2d 1926 (TTAB 2009). We note that opposer
states in its brief: “This issue of Applicant’s bona fide intent
to use is dispositive – if Applicant lacks a bona fide intent to
use the mark[] at issue, the Board need not expend resources and
effort on SZC’s likelihood of confusion ground for opposition.”
(Opposer’s brief at 28, n.7.)

6 Opposer’s additional evidence (to which we shall cite in this
opinion when appropriate), is summarized as follows. Opposer’s
Notice of Reliance (“NOR”) also includes: (a) NOR Exh. 1-38,
Opposition No. 91156452
6

1. Opposer’s Notice of Reliance (“NOR”) on
applicant’s discovery responses (NOR Exh. 39, 41
and 43), including his responses to opposer’s
interrogatories (“Int. No. __”), requests for
admissions (“RFA No. __”) and requests for
production of documents (“RFP No. __”);

2. The December 1, 2004 testimony deposition
of applicant Joseph Bumb (taken by opposer), and
exhibits thereto (“Bumb depo.”); and

3. The January 10, 2005 testimony deposition
of Lars Edman (president of opposer’s licensee
Prince August dba Mithril Miniatures) and
exhibits thereto (“Edman depo.”).

Applicant submitted no evidence at trial during his assigned
testimony period.7

which are status and title copies of opposer’s numerous
registrations of Tolkien-related marks; (b) NOR Exh. 50-112,
which are numerous printed publications referring to the Tolkien
works and to opposer’s 2001-2003 trilogy of feature films based
thereon; and (c) NOR Exh. 113-121, which are official USPTO
records concerning other applications for Tolkien-related marks
filed by applicant. Opposer also submitted the testimony
depositions, with exhibits, of various of its employees and
licensees. These are the depositions of: Albert Bendich
(“Bendich depo.”); Fredrica Drotos (“Drotos depo.”); Juliet Mason
(“Mason depo.”); Laurie Battle (“Battle depo.”); David Imhoff
(“Imhoff depo.”); and Akraim Saigh (“Saigh depo.”).

7 At page 2 of his brief, in his “Description of the Record,”
applicant asserts that “Applicant’s record in this case” includes
“The Pleadings, including any and all of Applicant’s
declarations.” To the extent that applicant by this reference to
“declarations” might be referring to his June 28, 2007
declaration in opposition to opposer’s summary judgment motion,
we have given that declaration no consideration because it was
not made of record at trial. See, e.g., Levi Strauss & Co. v. R.
Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); see generally
Trademark Board Manual of Procedure (TBMP) (2d Ed., Rev. 2004) at
§528.05(a) and cases cited therein. We note that the Board, in
its July 29, 2008 order denying opposer’s summary judgment
motion, advised the parties (at footnote 2) that summary judgment
evidence is of record only for purposes of determining the
summary judgment motion. Additionally, applicant’s assertions in
his answer to the notice of opposition and in his final brief on
the case are not in themselves evidence of the facts asserted
Opposition No. 91156452
7

Opposer.
Opposer, The Saul Zaentz Company, d.b.a. Tolkien
Enterprises, is a film production company. (Bendich depo.
at 7.) In 1976, opposer, by mesne assignments, acquired
from the J.R.R. Tolkien estate the exclusive world-wide
performance, motion picture and ancillary rights in and to
the Tolkien works. (Bendich depo. at 7-17, exh. 270-274;
Drotos depo. at 21-22, 32-33.) Since acquiring the rights,
opposer has used and licensed the use of various trademarks
based on names, objects, places and events depicted in and
derived from the Tolkien works (the “Tolkien marks”), for a
wide variety of goods and services including jewelry.
(Drotos depo. at 50-198, exh. 108-198.) Opposer owns
numerous federal trademark registrations of many of the
Tolkien marks, covering a wide variety of goods including
jewelry. (NOR Exh. 1-38.)8

except to the extent that they are supported by evidence at
trial, or except to the extent that they may have probative value
as admissions against interest. See TBMP at §706 and cases cited
therein. Finally, we add that our decision in this case would
have been the same even if we had considered these materials to
be evidence of record on applicant’s behalf.

8 Opposer’s registrations of Tolkien-related marks include
registrations of the marks LORD OF THE RINGS, MIDDLE EARTH,
ARAGORN, EVENSTAR, ONE RING TO RULE THEM ALL, MORDOR, ARWEN, MY
PRECIOUSSS, SARUMAN, GOLLUM, ELROND, EOWYN, FRODO, GALADRIEL,
RIVENDELL, THE ONE RING, and GANDALF. Opposer does not own a
registration of the mark involved in this case, i.e., MITHRIL,
Opposition No. 91156452
8
Applicant.
Applicant, Joseph M. Bumb, owns a company called
American Precious Metals, formed in 1980. (Bumb depo. at
17-18.) He operates a store at the San Jose Flea Market in
California, where he buys and sells a range of products
including jewelry, collectibles and memorabilia. (Bumb
depo. at 21-22.) Applicant also engages in the custom
design and manufacture of jewelry. (Bumb depo. at 24-27.)

Discussion.
To review, applicant seeks registration of the mark
MITHRIL for various jewelry items. Applicant filed this
intent-to-use application on September 12, 2001. Opposer’s
ground of opposition is lack of bona fide intent under
Trademark Act Section 1(b).

What is Mithril?
There is no dispute that “mithril” is the name of a
mythical precious metal which figures prominently in the
Tolkien works. (Drotos Depo. at 26-27.) An entry for the
word appears in the Oxford English Dictionary (2d ed. 1989):
“Mithril - Name given by J.R.R. Tolkien to a mythical
precious metal.” (NOR Exh. 112; Bumb depo. Exh. 4).

but instead relies on its common-law rights in that mark. See
discussion below regarding opposer’s standing.
Opposition No. 91156452
9
Applicant confirmed the accuracy of this definition of
Mithril in his testimony:

Q. ... And that’s what you understood it
to be, right?
A. That is a metal found in J.R.R.
Tolkien’s works, yes. ... A precious metal,
yes.
(Bumb depo. at 47-48.)

Opposer’s Burden.
To prevail in this opposition proceeding, opposer must
establish its standing to oppose and at least one statutory
ground of opposition to registration of the mark. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000).

Opposer’s Standing.
To establish its standing to oppose registration of the
MITHRIL mark applicant seeks to register, opposer must prove
that it has a real interest in the outcome of this
proceeding and thus a reasonable basis for its belief that
it would be damaged by issuance of a federal trademark
registration of the mark to applicant. See Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999);
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982); Time Warner Entertainment
Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002).
Opposition No. 91156452
10
The record establishes that one of opposer’s licensees,
Prince August dba Mithril Miniatures, has marketed
collectible miniature figurines depicting characters from
the Tolkien works in the United States since the late
1980’s, using MITHRIL MINIATURES as its trade name and as a
trademark pursuant to license from opposer. (Edman depo. at
14-16, exh. 29-30; Drotos depo. at 27, 83-84, exh. 124.)
We find that such use of MITHRIL by opposer’s licensee
establishes that opposer has a real interest in the outcome
of this proceeding and thus a reasonable basis for believing
that it would be damaged by issuance of a federal trademark
registration of the mark MITHRIL to applicant. We therefore
find that opposer has established its standing to oppose
registration of applicant’s MITHRIL mark.

Opposer’s Section 1(b) Ground of Opposition.
Having found that opposer has standing to oppose, we
turn now to opposer’s Section 1(b) ground of opposition,
wherein opposer contends that applicant’s MITHRIL
application is void ab initio because applicant lacked the
requisite bona fide intention to use the mark in commerce as
of the application filing date.
In pertinent part, the Trademark Act provides that “[a]
person who has a bona fide intention, under circumstances
showing the good faith of such person, to use a trademark in
Opposition No. 91156452
11
commerce may request registration of its trademark on the
principal register....” Trademark Act Section 1(b)(1), 15
U.S.C. §1051(b)(1).
The Board has held that “...the determination of
whether an applicant has a bona fide intention to use the
mark in commerce is to be a fair, objective determination
based on all the circumstances.” Lane Ltd. v. Jackson
International Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994).
The Board also has stated that the requirement that an
applicant must have a bona fide intent to use the mark in
commerce “must be read in conjunction with the revised
definition of ‘use in commerce’ in Section 45 of the
Trademark Act, which the Trademark Law Revision Act of 1988
amended to require that such use be ‘in the ordinary course
of trade, and not made merely to reserve a right in a
mark.’” Commodore Electronics Ltd. v. CBM Kabushiki Kaisha,
26 USPQ2d 1503, 1507 (TTAB 1993).
Because the determination of whether applicant had the
requisite bona fide intent to use the mark is to be based on
objective evidence of such intent, “...applicant’s mere
statement of subjective intention, without more, would be
insufficient to establish applicant’s bona fide intention to
use the mark in commerce.” Lane Ltd., supra, 33 USPQ2d at
1355. See also L.C. Licensing Inc. v. Berman, 86 USPQ2d
1883 (TTAB 2008). The Board has held that
Opposition No. 91156452
12

... applicant's mere statement that it intends to
use the mark, and its denial that it lacked a bona
fide intent, do not establish, in fact, that it
had a bona fide intent to use the mark in commerce
when it filed the involved application. Evidence
bearing on bona fide intent

is “objective” in the sense that it is
evidence in the form of real life facts and
by the actions of the applicant, not by the
applicant's testimony as to its subjective
state of mind. That is, Congress did not
intend the issue to be resolved simply by an
officer of applicant later testifying, “Yes,
indeed, at the time we filed that
application, I did truly intend to use the
mark at some time in the future.”

Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1931
(TTAB 2009), quoting from J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, §19:14 (4th ed. 2009).
“Opposer has the initial burden of demonstrating by a
preponderance of the evidence that applicant lacked a bona
fide intent to use the mark on the identified goods.”
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581,
1587 (TTAB 2008). If opposer meets this initial burden of
proof, the burden of production shifts to applicant “...to
rebut the opposer’s prima facie case by offering additional
evidence concerning the factual circumstances bearing upon
its intent to use its mark in commerce.” Commodore
Electronics Ltd., supra, 26 USPQ2d at 1507 n.11.
One way in which an opposer can establish its prima
facie case of no bona fide intent is by proving that
Opposition No. 91156452
13
applicant has no documentary evidence to support its
allegation in the application of its claimed bona fide
intent to use the mark in commerce as of the application
filing date. The Board has held:

... absent other facts which adequately explain or
outweigh the failure of an applicant to have any
documents supportive of or bearing upon its
claimed intent to use its mark in commerce, the
absence of documentary evidence on the part of an
applicant regarding such intent is sufficient to
prove that the applicant lacks a bona fide
intention to use the mark in commerce as required
by Section 1(b).

Commodore Electronics Ltd., supra, 26 USPQ2d at 1507. See
also Boston Red Sox Baseball Club LP, supra, 88 USPQ2d at
1587 (“The absence of any documentary evidence on the part
of an applicant regarding such intent constitutes objective
proof sufficient to prove that the applicant lacks a bona
fide intention to use its mark in commerce.”); Research In
Motion Ltd., supra, 92 USPQ2d at 1931.
Applying these principles in the present case, we find
as follows.
Applicant filed his intent-to-use application for
MITHRIL on September 12, 2001. Prior to that, on August 14,
2001, he had registered the domain names mithrilsilver.com,
mithrilsilver.net and mithrilsilver.org. (Bumb depo. at 37-
40.) Applicant has never taken any steps to construct or
Opposition No. 91156452
14
operate a website under the “mithrilsilver” domain names.
(Bumb depo. at 68-70, exh. 14.)
Applicant has admitted that aside from documents filed
with the USPTO pertaining to his intent-to-use trademark
application and documents pertaining to his registration of
the domain names, applicant has no documents relating to his
adoption of or intent to use the MITHRIL mark in commerce.
(Bumb depo. at 77-78; RFP Nos. 1, 5, 7 and 9 (NOR Exh. 43).)
Pursuant to the authorities discussed above, we find
that applicant’s lack of documentary evidence suffices to
establish opposer’s prima facie case that applicant lacked
the requisite bona fide intent to use the mark in commerce
as of the application filing date.
Moreover, we find additional evidence establishing
opposer’s prima facie case in applicant’s statements made
during his testimony deposition (taken by opposer). First,
applicant testified that he adopted the MITHRIL mark because
of it’s significance in the Tolkien works:

A. ... The term ‘mithril’ is employed by
J.R.R. Tolkien in his works.
Q. And the idea that you had to use that
came from Tolkien’s works?
A. Reading the books, right.
(Bumb depo. at 46-47.)

... And I was trying to figure out a name that
would be, I would say, synonymous with my mind,
my projections of my business. And they were,
this association with Mithril goes back with me
when I first read the Hobbit. And I would say
Opposition No. 91156452
15
that it was just having that familiarity with
the Middle Earth and Tolkien’s realm that it
came to me in a thought.
(Bumb depo. at 37.)

Second, applicant’s testimony demonstrates that
applicant’s intention as of the application filing date was,
at most, merely to reserve a right in the term MITHRIL by
registering the domain names and filing the trademark
application, without the requisite corresponding bona fide
intent to actually use the mark in commerce. For example,
applicant testified:

Q. And those are the domain names that
you –
A. I maintained, yes.
Q. And you did that all before applying
for the trademark application, right?
A. Yes, I almost didn’t really even
consider the trademark part of it until as an
afterthought. As you can see, there’s almost a
month in between.
Q. Why is it that you decided to try to
apply for a trademark for Mithril?
A. It seemed like the right thing to do.
In a business sense, if you are going to make
an effort and go down a certain path, you
wouldn’t want to go down the path and then
discover that you didn’t cover all your bases.
(Bumb depo. at 40.)

Q. What kinds of jewelry were you going
to call Mithril?
A. Well, Mithril, my concept was more the
material than any, actually a specific item.
Q. So you had no specific item?
A. I listed in the trademark application
specific items because those are items that end
up, people asking for. And so it was, the idea
was to develop a unique product line, specific
to my creative abilities and have Mithril be an
Opposition No. 91156452
16
alloy material that would have certain
properties that would be reasonable but also
not just be silver. It would be of a higher –
different properties so it wouldn’t tarnish; it
might be harder, have a higher sheen to it.
(Bumb depo. at 41-42.)

Q. And who were you going to sell this
jewelry to once it was made?
A. Well, I hoped to develop my own market
for it. So it would be – my local, you know,
experimentally, my local industry but, you
know, potentially, via my web site to attract a
worldwide audience or market.
...
Q. And did you have any marketing plans
on how you were going to market this jewelry?
A. Just – you say marketing plans, no,
designing a web site and try just to go through
that avenue. I’m not sure what it all entails.
That’s part of the process of Internet word of
mouth.
...
Q. Did you have a price at which you
planned to sell this jewelry?
A. No.
...
Q. Aside from the Internet did you plan
to sell this jewelry in any retail outlets?
A. No plans.
Q. Have you ever made a piece of jewelry
with silver and gold that you planned to use as
a prototype for Mithril jewelry?
A. No.
(Bumb depo. at 43-44.)

Q. And did you have any plans for a
particular product line?
A. No, not specifically. I mean just the
opportunity to create something in the future.
(Bumb depo. at 53.)

Q. I guess what I’m trying to understand
is whether you were going to make a line of
jewelry and call it Mithril or LOTR or whether
there were going to be two separate lines of
jewelry.
Opposition No. 91156452
17
A. I had no intent either way.
Q. Okay.
A. At this point I was just applying for
the trademark or first the domain and then
cover the trademark in lieu of something
growing. No intent.
(Bumb depo. at 52.)9

We find that applicant’s testimony, considered in its
entirety, establishes that he had nothing more than a vague
plan for, or conception of, how he would actually use the
MITHRIL mark in commerce on jewelry, and that he filed his
trademark application merely to reserve a right in the mark.
Indeed, applicant’s statements that he filed the trademark
application “in lieu of something growing” and “just for the
opportunity to create something in the future,” essentially
are his admissions that he filed the application merely to
reserve a right in the mark. See Research In Motion Ltd.,
supra, 92 USPQ2d at 1931 (applicant’s stated belief that the
applied-for mark would be “a good mark for future use” does
not establish a bona fide intent to use).
In short, we find that applicant’s testimony, and the
fact that applicant has no documentary evidence to support
his claim of bona fide intent to use the mark as of the
application filing date, establish opposer’s prima facie
case of no bona fide intent.

9 LOTR is the mark involved in Opposition No. 91156518. See
above at footnote 1.
Opposition No. 91156452
18
Opposer having made out its prima facie case, the
burden shifts to applicant to rebut that prima facie case by
producing evidence which would establish that he had the
requisite bona fide intent to use the mark when he filed his
application. See Commodore Electronics Ltd., supra, 26
USPQ2d at 1507.
Applicant presented no testimony or other evidence at
trial. Applicant’s mere assertions throughout this
proceeding of his subjective intent to use the mark do not
constitute objective evidence of such intent which would
rebut opposer’s prima facie showing of no bona fide intent.
See Lane Ltd., supra, 33 USPQ2d at 1355; Research In Motion
Ltd. v. NBOR Corp., supra, 92 USPQ2d at 1931.
Applicant asserts for the first time in his brief that,
on April 25, 2001, opposer sent him a cease and desist
letter threatening legal action if he were to use the
MITHRIL mark.10 Applicant further states in his brief that
upon receipt of the letter, he “voluntarily complied with
the cessation of development of his MITHRIL product line.”
(Applicant’s brief at 4.) Applicant argues that opposer’s
claim of no bona fide intent is based, unfairly, on
applicant’s compliance with the cease and desist letter.

10 At various points in his testimony, applicant made reference to
opposer’s cease and desist letter, but his assertion that he
received the cease and desist letter on that particular date,
i.e., April 25, 2001, is made for the first time in his appeal
brief.
Opposition No. 91156452
19
However, applicant has not made the alleged April 25,
2001 letter of record, nor has he presented any other
evidence to support a finding that opposer sent such a
letter to applicant on that date or at any time prior to the
September 12, 2001 intent-to-use application filing date.
In footnote 2 of its reply brief, opposer acknowledges that
it sent a cease and desist letter to applicant, but asserts
that the letter was not sent until after the application was
filed (which, as opposer reasonably points out, is the
earliest that opposer could have been on notice of
applicant’s intention to register the mark). Moreover,
applicant’s contention that he received and complied with
the cease and desist letter prior to the application filing
date would seem to be inconsistent with the fact that,
despite the alleged pre-application receipt of the letter,
he proceeded to file the application for registration of the
mark.
Applicant’s receipt of a cease and desist letter after
the application filing date might have helped to explain a
decision, made after the filing date, to cease development
of a MITHRIL product line until after applicant’s rights in
the mark had been resolved. However, such a letter received
after the application filing date, and applicant’s asserted
compliance therewith, does not help to establish that
applicant had a bona fide intent to use the mark when he
Opposition No. 91156452
20
filed the application on September 12, 2001, which is the
date at issue here. Cf. L.C. Licensing Inc. v. Berman,
supra, 86 USPQ2d at 1892 (“Applicant's decision to forgo a
business model until after the opposition is decided does
not explain his failure to have any documents whatsoever at
the time the application was filed that showed an intent to
use the mark.”).
Thus, we are not persuaded by applicant’s argument that
opposer’s cease and desist letter, which on this record is
not shown to have been received prior to the application
filing date, explains or excuses the absence of documentary
evidence or any other evidence to support applicant’s claim
that he had a bona fide intent to use the mark in commerce
when he filed his application on September 12, 2001.
For all of the reasons discussed above, we find that
the preponderance of the evidence establishes that applicant
lacked the requisite bona fide intention to use the MITHRIL
mark in commerce when he filed his intent-to-use application
to register that mark. Specifically, applicant has no
documentary evidence to support his bona fide intent claim,
a fact which suffices in itself to establish that applicant
lacked a bona fide intention to use the mark when he filed
his application. See Commodore Electronics Ltd., supra, 26
USPQ2d at 1507; Research In Motion Ltd., supra, 92 USPQ2d at
1931; and Boston Red Sox Baseball Club LP, supra, 88 USPQ2d
Opposition No. 91156452
21
at 1587. Applicant presented no evidence at trial to
support a contrary finding. See Research In Motion Ltd.,
supra, 92 USPQ2d at 1931 (“The absence of documentation
coupled with applicant’s failure to take testimony or offer
any evidence supporting its bona fide intent to use convince
us that applicant did not have a bona fide intent to use the
mark.”) Moreover, applicant’s testimony includes what
essentially are his admissions that he filed his intent-to-
use application merely to reserve a right in the MITHRIL
mark “in lieu of something growing” and “just for the
opportunity to create something in the future.”
We conclude that opposer has established its Section
1(b) ground of opposition to registration of applicant’s
MITHRIL mark based on applicant’s lack of bona fide intent
to use the mark when he filed his intent-to-use application
to register that mark. We therefore also conclude that the
application is void ab initio. We have considered all of
applicant’s arguments to the contrary, but we are not
persuaded by them.

Conclusion and Decision.
Based on the entirety of the evidence of record, and
for all of the reasons discussed above, we conclude that
opposer has established its standing to oppose registration
Opposition No. 91156452
22
of applicant’s MITHRIL mark, and has established its Section
1(b) ground of opposition to registration of that mark.

Decision: The opposition is sustained.