L.C. Licensing, Inc.v.Cary Berman

Trademark Trial and Appeal Board

Mar 28, 2008

No. 91162330 (T.T.A.B. Mar. 28, 2008)

Mailed: March 28, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

L.C. Licensing, Inc.
v.
Cary Berman
_____

Opposition No. 91162330
to application Serial No. 78320850
filed on October 30, 2003
_____

Kieran G. Doyle of Cowan, Liebowitz & Latman, P.C. for L.C.
Licensing, Inc.

Cary Berman, pro se.
______

Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Cary Berman
(applicant) to register the mark ENYCE (standard characters)
for “custom automotive accessories, namely, fitted car
covers, shift knobs, brake pads, and wheels for land
vehicles, license plate holders and spoilers for vehicles”
in International Class 12.1

1 Serial No. 78320850, filed on October 30, 2003, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91162330
2
Registration has been opposed by L.C. Licensing, Inc.
(opposer). In its amended notice of opposition, opposer
alleges that it is the owner of the following marks and
registrations:
(1) ENYCE (typed drawing form),2 and

(2) ENYCE and design, shown below,3

both of which are registered for apparel and
headwear for men, women and children, namely, hats,
caps, visors, headbands, shirts, jackets, jogging
suits, pants, coats, T-shirts, shorts, tank tops,
skirts, warm-up suits, sweat shirts and sweat
pants.4

Opposer further alleges that its ENYCE marks “have been
the subject of extensive press and media coverage;” and that
“in part due to the media coverage given to opposer’s marks,

2 Registration No. 2093751, issued on September 9, 1997; renewed.
3 Registration No. 2351411, issued on May 23, 2000; Section 8
affidavit accepted; Section 15 affidavit acknowledged.
4 Opposer also pleaded ownership of Registration No. 2338404,
issued April 4, 2000, for the mark LADY ENYCE for various women’s
clothing items. While a certified copy of this registration was
made of record which shows that the registration is subsisting
and owned by opposer, we note that the records of the U.S. Patent
and Trademark Office show that the registration was canceled for
failure to file a Section 8 affidavit. In view thereof, no
further consideration will be given to this registration.
Opposition No. 91162330
3
and in part due to opposer’s extensive use of opposer’s
marks, [such marks] have acquired enormous value and
goodwill and have become extremely well-known and famous;”
that applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s ENYCE marks for its products as to be
likely to cause confusion, mistake or deception; and that
applicant did not have a bona fide intention to use his mark
in commerce on the specified goods when he filed his
application.
Applicant, in his answer, denied the salient
allegations of the amended notice of opposition.
The Record
The record consists of the pleadings; the file of the
involved application; the testimony deposition (with
exhibits) of opposer’s founder and vice-president, Rolando
Felix; and opposer’s notices of reliance on the following:
certified copies of opposer’s pleaded registrations,
applicant’s answers to opposer’s interrogatories and
requests for production of documents,5 excerpts from printed
publications, third-party registrations for the mark MECCA,
applicant’s application for the mark MECCA, the discovery
deposition of applicant, and Internet printouts (with the

5 Although documents submitted in response to document production
requests generally cannot be made of record by notice of
reliance, See Trademark Rule 2.120(j)(3)(ii), here opposer
submitted applicant’s responses that no such documents exist.
Opposition No. 91162330
4
declaration of William Cadenilla, the paralegal who
conducted the Internet searches), submitted pursuant to the
parties’ stipulation.
Applicant submitted notices of reliance on the
discovery deposition (with exhibits) of Rolando Felix; the
testimony deposition (with exhibits) of opposer’s president,
Evan T. Davis; and letters and emails between opposer’s
former counsel herein and applicant.6
Preliminary Matter
On July 19, 2007, after the parties had filed main
briefs herein, applicant filed a “Motion To Allow New
Information.” Applicant seeks to introduce a copy of a July
11, 2007 Wall Street Journal article which applicant
maintains shows that opposer intends to abandon its ENYCE
mark. Opposer has filed a brief in opposition to
applicant’s motion.
By way of this motion, applicant essentially seeks to
reopen his testimony period and introduce newly discovered
evidence. Trademark Board Manual of Procedure (TBMP)
§509.01(b)(2) (2d ed. rev. 2004) provides that:

6 Letters and emails are generally not proper subject matter for
introduction by notice of reliance because they do not constitute
printed publications under Trademark Rule 2.122(e). However,
opposer has treated these materials as being of record, setting
forth in its brief that such materials are part of the “evidence
of record.” Therefore, we consider opposer to have stipulated to
the submission of this evidence, and have treated it as of
record.
Opposition No. 91162330
5
If a party files a motion to reopen its testimony
period to introduce newly discovered evidence, the
moving party must show not only that the proposed
evidence has been newly discovered, but also that
the evidence could not have been discovered earlier
through the exercise of reasonable diligence.
However, even if a sufficient showing of due
diligence has been made, the Board will not
automatically reopen a party’s testimony period for
introduction of new evidence. The Board must also
consider such factors as the nature and purpose of
the evidence sought to be brought in, the stage of
the proceeding, and prejudice to the nonmoving
party. (footnotes omitted)

In view of the article’s publication date, there is no
question that the article constitutes newly discovered
evidence, and that it could not have been discovered
earlier. However, insofar as the nature of the evidence is
concerned, a newspaper article is probative only for what it
shows on its face, not for the truth of the matters
contained therein, unless a competent witness testifies to
the truth of such matters. TBMP §704.08 (2d ed. rev. 2004).
In other words, the article is not evidence of opposer’s
intent to abandon its ENYCE mark. Also, applicant’s
contention that the article shows that opposer intends to
abandon its ENYCE mark is misleading because the article
refers to an attempt to “sell or license out or possibly
discontinue …. Enyce.” (emphasis added). Further,
considering the stage of this proceeding, to allow applicant
to submit this article would clearly be prejudicial to
opposer. Applicant’s contention that opposer intends to
abandon its ENYCE mark could only be entertained in the
Opposition No. 91162330
6
context of a counterclaim to cancel opposer’s registrations
on the ground of abandonment, and therefore what is
essentially a new trial would have to be commenced.
Under the circumstances, applicant’s motion is denied.7
Standing and Priority
Because opposer has properly made its pleaded
registrations of the marks ENYCE and ENYCE and design of
record, we find that opposer has established its standing to
oppose registration of applicant’s mark. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); and Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Moreover, because
such registrations show that opposer is the current owner
thereof and that each is valid and subsisting, there is no
issue with respect to opposer’s priority. King Candy Co.,
Inc. v. Eunice King’s Kitchen Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974). We add, however, that priority is also
clearly established by the evidence showing opposer’s use
since 1997 of the registered marks ENYCE and ENYCE and
design for the goods identified in the registrations.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative

7 Because we will not allow a reopening of the case in order to
allow applicant the opportunity to file a counterclaim, the
principle of res judicata cannot apply to such a claim.
Opposition No. 91162330
7
facts in evidence that are relevant to the factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
The Marks
We first consider the du Pont factor regarding the
similarity or dissimilarity of the marks in terms of sound,
appearance, connotation and commercial impression. We note
that applicant does not argue that his ENYCE mark is
dissimilar to opposer’s ENYCE mark in typed drawing form in
any respect. In terms of appearance, the marks are
obviously identical. With respect to sound, opposer has
suggested several different ways of pronouncing its mark.
Suffice it to say that there is no correct pronunciation of
a mark, and in any event, because the marks are identical in
appearance, they will be pronounced in the same ways.
Insofar as connotation is concerned, ENYCE is basically an
arbitrary term which is devoid of ordinary dictionary or
other meaning with the exception of trademark significance.
To the extent that opposer’s and applicant’s ENYCE marks
have any connotation, the connotation is the same. Inasmuch
as the marks are identical in terms of sound, appearance,
and connotation, the overall commercial impressions conveyed
by the marks are the same as well.
Opposition No. 91162330
8
Further, we find that applicant’s ENYCE mark and
opposer’s ENYCE and design mark are identical in sound, and
highly similar in appearance, connotation and commercial
impression. Again, applicant does not argue otherwise. In
terms of sound, obviously the design portion of opposer’s
mark will be not be spoken, and thus, the marks are
identical in this respect. Further, it is well settled that
if a mark comprises both a word and a design, then the word
is normally accorded greater weight because it would be used
by purchasers to request the goods. In re Appetito
Provisons Co., 3 USPQ2d 1553 (TTAB 1987). Here, the term
ENYCE in opposer’s ENYCE and design mark is identical to
applicant’s ENYCE mark. When we compare these marks in
their entireties, with appropriate weight given to the term
ENYCE in opposer’s mark, we find that the marks are highly
similar in appearance, connotation and commercial
impression. Thus, the du Pont factor of the similarity of
the marks favors a finding of likelihood of confusion.
Fame
Opposer markets urban lifestyle clothing and
accessories. This is a style or category of clothing,
rather than a description of the location of the consumers
of the clothing. Indeed, the market for urban lifestyle
clothing and accessories is not limited to shoppers in urban
areas, but rather the products appeal to shoppers in
Opposition No. 91162330
9
suburban and rural areas as well. From 1997 through 2006,
sales of ENYCE branded goods totaled over $600 million.
Opposer’s ENYCE products are sold at approximately 2000
locations in the United States. The products are sold in
major department stores such as Bloomingdale’s, Nordstrom’s,
Dillard’s and Saks Fifth Avenue, as well as in high-end
specialty stores. Every major mall has within it an average
of three separate stores selling ENYCE goods.
From 1997 through 2006, opposer spent approximately
$32 million on marketing, approximately $13 million of which
was allotted to advertising. This included print
advertisements, billboards, bus and train advertisements,
and radio advertisements. In terms of print advertisements,
opposer advertises in magazines geared to the urban
lifestyle market. Such magazines include Vibe, a national
music magazine with a monthly circulation of approximately
1,000,000; and XXL and Source, both of which are nationally
distributed magazines with circulations over 500,000.
Additional magazines in which opposer advertises include
Vibe Vixen, Elle Girl, Complex, Fader, Elemental and Dub.
The billboard advertisements appeared in New York
City’s Harlem and Times Square, on Sunset Boulevard during
the Grammy Awards and the Oscar Awards, and in Houston,
Texas during the 2006 National Basketball Association All-
Star Game. Opposer has 115,000 registered users of its
Opposition No. 91162330
10
website and it has had as many as 80,000 unique visitors to
its website in some months.
Opposer’s clothing has been worn by performers in Hip-
Hop and urban music videos, and by actors and actresses in
television shows and movies such as “The Fast and The
Furious” and “2 Fast 2 Furious.”
The Court of Appeals for the Federal Circuit has held
that the fame of an opposer’s mark, if it exists, plays a
“dominant role in the process of balancing the DuPont
factors.” Recot Inc. v. M.C. Becton, 214 F.3d 1332, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000).
Insofar as opposer’s sales and advertising figures are
concerned, while they are indeed substantial, opposer has
not provided a meaningful context for the figures, such as
evidence of opposer’s market share for the goods. As the
Federal Circuit has stated, “[r]aw numbers of product sales
and advertising expenses may have sufficed in the past to
prove fame of a mark, but raw numbers alone in today’s world
may be misleading … Consequently, some context in which to
place raw statistics is reasonable.” Bose Corp. v. QSC
Audio Prods., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir.
2002). In this case, opposer has failed to put the figures
in context in terms of where ENYCE ranks among clothing
brands, in general, or even among urban lifestyle clothing
brands, in particular. Also, unlike Bose, the record here
Opposition No. 91162330
11
does not show that opposer’s ENYCE clothing and accessories
have received widespread critical attention. Thus,
opposer’s evidence falls short of establishing that
opposer’s ENYCE and ENYCE and design marks are truly famous.
See Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811,
1819 (TTAB 2005) [“In view of the extreme deference that is
accorded to a famous mark in terms of the wide latitude of
legal protection it receives, and the dominant role fame
plays in the likelihood of confusion analysis, it is the
duty of a plaintiff asserting that its mark is famous to
clearly prove it.”].
Nonetheless, we acknowledge that the sales and
advertising figures demonstrate that opposer’s marks have
achieved recognition, and in view of the distinctive nature
of the term ENYCE, we find opposer’s marks to be strong.
The du Pont factor of fame is neutral. The
distinctiveness of opposer’s ENYCE marks, however, weighs in
opposer’s favor.
The Goods
We next consider the du Pont factor regarding the
similarity or dissimilarity of the goods. Applicant’s goods
are identified as “custom automotive accessories, namely,
fitted car covers, shift knobs, brake pads, and wheels for
land vehicles, license plate holders and spoilers for
vehicles.” Opposer’s ENYCE and ENYCE and design
Opposition No. 91162330
12
registrations cover clothing and accessories. It is readily
apparent that opposer’s goods are different from applicant’s
goods. However, it is a general rule that goods or services
need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it is
enough that goods or services are related in some manner or
that some circumstances surrounding their marketing are such
that they would be likely to be seen by the same persons
under circumstances which could give rise, because of the
marks used or intended to be used therewith, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991),
and cases cited therein.
Moreover, “the greater the degree of similarity in the
marks, the lesser the degree of similarity that is required
of the products or services on which they are being used in
order to support a holding of likelihood of confusion.” In
re Concordia International Forwarding Corp., 222 USPQ 352,
356 (TTAB 1983). See also, In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) [Contemporaneous
use of identical or nearly identical marks can lead to the
assumption that there is a common source “even when [the]
Opposition No. 91162330
13
good or services are not competitive or intrinsically
related”].
As previously indicated, opposer’s clothing and
accessories are directed to the urban lifestyle market.
According to opposer’s vice-president, Mr. Felix, the urban
lifestyle market largely finds its identity in its
relationship to hip-hop and R&B music. Integral to the
urban lifestyle market are clothing, jewelry, automobiles
and automotive accessories. In this regard, Mr. Felix
testified as follows:
… car culture and car lifestyle is integrated in
hip-hop lifestyle and hip-hop culture and urban
culture. (Test. dep. at 38).

Nice cars, nice fashion, urban lifestyle – all three
of them go together and are interrelated. (Test.
dep. at 67).

Further, Mr. Felix testified that the trendsetters
within the urban lifestyle market typically are recording
artists and athletes. These individuals dictate what style
of clothing is fashionable, what type of jewelry is in
vogue, and what automobile embellishments and accessories
are desirable. Opposer submitted a large number of cover
pages and advertisements from magazines directed to the
urban lifestyle market. These cover pages and
advertisements show recording artists and athletes wearing
urban lifestyle clothing; many of them are alongside exotic
cars.
Opposition No. 91162330
14
Also, Mr. Felix testified that most hip-hop recordings
include lyrics that make reference to exotic cars and custom
car accessories, such as after-market wheels and rims.
There’s [sic] many references [in hip-hop music]
towards high-end automobiles, exotic cars, exotic
sports cars, expensive SUVs, expensive cars. And
many times, there are references to the automotive
accessories that are placed on these cars, whether
it’s the specific type of engine or the specific
type of wheels, the size of the wheels.
(Test. dep. at 85).

Much of the jewelry that is directed to the urban
lifestyle market replicates decorative automotive wheels and
rims. Opposer has submitted Internet printouts from
websites at which this type of jewelry is offered for sale.
The record also shows that opposer itself has sponsored
car shows, car show ticket giveaway contests, and a contest
in which the winner was awarded a car featuring opposer’s
ENYCE and design mark in the paint job and on the headrests.
It is common knowledge, and a fact of which we can take
judicial notice, that the licensing of commercial trademarks
on “collateral products” has become a part of everyday life.
See Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942,
1945-1946 (TTAB 1996) and cases therein.
While opposer has not licensed its marks for
automobiles or automotive accessories, Mr. Felix testified
that opposer has used its ENYCE and ENYCE and design marks
on a variety of merchandised items, i.e., shoes, scarves,
key rings, umbrellas, action figures, luggage tags, cuff
Opposition No. 91162330
15
links, flight tags, blankets, beach towels, sleep masks and
skate boards.
In addition, the record shows use of the clothing brand
marks EDDIE BAUER and L.L. BEAN on automobiles. Further,
Mr. Felix testified that the urban lifestyle clothing brand,
SEAN JOHN, is used on automobile wheels, and the urban
lifestyle brand, MARK ECKO, has partnered with Nissan
automobiles to develop a special edition vehicle.
We find that the uncontroverted testimony of Mr. Felix
and the evidence of record demonstrates an association
between urban lifestyle clothing and custom automotive
accessories. Particularly in today’s marketing environment,
where the licensing of commercial marks is widespread, the
purchasing public is likely to believe that applicant’s
customized automotive accessories come from or are sponsored
by or associated with opposer.
As the Federal Circuit stated in Recot at 54 USPQ2d
1898: “Even if the goods in question are different from,
and thus not related to, one another in kind, the same goods
can be related in the mind of the consuming public as to the
origin of the goods. It is this sense of relatedness that
matters in the likelihood of confusion analysis.”
Similarly, in Hewlett-Packard v. Packard Press, Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002), the Court
stated: “Even if the goods and services in question are not
Opposition No. 91162330
16
identical, the consuming public may perceive them as related
enough to cause confusion as to source or origin of the
goods and services.”
We find that in the sense discussed in the above cases,
applicant’s custom automotive accessories and opposer’s
urban lifestyle clothing and accessories are related goods.
This du Pont factor favors a finding of likelihood of
confusion.
Trade Channels
With respect to the trade channels, we recognize that
clothing and accessories and custom automotive accessories
are not typically offered in the same channels of trade.8
Nonetheless, such goods would be offered to and encountered
by the same classes of consumers. In this regard, we note
that neither opposer’s nor applicant’s identifications of
goods is restricted as to classes of purchasers.
Accordingly, we must presume that the parties’ respective
goods are marketed to all the normal classes of purchasers
for these types of goods, which would include ordinary
consumers.
To the extent that the respective goods would be
offered to and encountered by the same classes of consumers,

8 Contrary to opposer’s contention, the fact that the respective
goods are advertised in the same magazines does not lead to the
conclusion that such goods travel in the same trade channels.
Opposition No. 91162330
17
this du Pont factor favors a finding of likelihood of
confusion.
Conditions of Purchase
With respect to the du Pont factor of the conditions of
purchase, many of the clothing items and accessories listed
in opposer’s identification of goods and the license plate
holders listed in applicant’s identification of goods are
relatively inexpensive, impulse items. Purchasers of such
goods are held to a lesser standard of purchasing care, and
this du Pont factor therefore favors a finding of likelihood
of confusion. Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed.
Cir. 1984).
Third-Party Use
The next du Pont factor we consider is the number and
nature of similar marks in use on similar goods. Because
there is no evidence of third-party use of the mark ENYCE of
record, this factor is neutral, and insofar as it shows the
strength of opposer’s marks, it favors opposer.
Applicant’s bad faith
Under the thirteenth du Pont factor, evidence of
applicant’s bad faith adoption of his mark is relevant to
our likelihood of confusion analysis.
With respect to his adoption of the ENYCE mark,
applicant testified that he independently thought to use the
Opposition No. 91162330
18
mark on automotive accessories. According to applicant, he
invented the ENYCE mark by adding the letter “e” to the
beginning and end of “NYC,” the abbreviation for New York
City; and that if his brand strategy worked, he would add
the letter “e” to the beginning and end of the city
names/nicknames Detroit, LA, Philly, and Chicago, in order
to build additional brands. When applicant was asked why he
thought that ENYCE would be a good trademark for custom
automotive accessories, he responded: “Why. I don’t know. I
don’t even know how to answer that question.” (Disc. dep.
at 41).
Opposer’s vice-president, Mr. Felix, testified that
MECCA is also an urban lifestyle clothing brand, and the
record shows that a third-party owns registrations for the
MECCA mark for clothing. Opposer’s counsel asked applicant
about applicant’s application, filed in August 2003, to
register the mark MECCA for goods which are identical to
those involved herein, i.e., custom automotive accessories.
Applicant testified that he adopted the MECCA mark in 2003
as a reference to the city by that name, but that he later
abandoned the application in 2004 because of the anti-Muslim
sentiment in the United States after September 11, 2001.
Opposer’s counsel asked applicant to explain how the anti-
Muslim climate in the United States changed between 2003 and
2004. Applicant’s response was “I don’t know, I don’t
Opposition No. 91162330
19
recall.” (Disc. dep. at 133). When asked whether it was a
coincidence that he has tried to register for custom
automotive accessories two urban lifestyle clothing brands,
applicant’s response was “Don’t know.” (Disc. dep. at 149).
Applicant’s explanation of his adoption of the ENYCE
mark and his “strategy” to build additional brands strains
credulity. This, coupled with the fact that applicant was
unable to articulate whey he thought ENCYE would be a good
mark for his goods, and his inability to explain why he has
tried to register two urban lifestyle clothing brands for
custom automotive accessories, leads us to the conclusion
that applicant’s adoption of the ENYCE mark was in bad
faith, with the intention to trade off of opposer’s ENYCE
mark. Such bad faith is strong evidence that confusion is
likely, as such an inference is drawn from the imitator’s
expectation of confusion. See Broadway Catering Corp. v.
Carla Inc., 215 USPQ 462 (TTAB 1982). See also DC Comics,
Inc. v. Powers, et al., 465 F.Supp. 843, 201 USPQ 99 (SDNY
1978).
The du Pont factor of bad faith is resolved in favor of
finding a likelihood of confusion.
Conclusion
In sum, when we consider the evidence of record in
light of the relevant du Pont factors, we conclude that
there is a likelihood of confusion. The marks of the
Opposition No. 91162330
20
parties are identical/highly similar, opposer’s marks are
strong, the goods are related, the classes of purchasers are
overlapping, some of opposer’s and applicant’s goods are
inexpensive, impulse purchases, and applicant acted in bad
faith in adopting his mark. If prospective purchasers were
to encounter the mark ENYCE on custom automotive
accessories, they would be likely to believe that these
products come from, are sponsored by or associated with the
source of the ENYCE and ENYCE and design clothing and
accessories.
Applicant’s lack of a bona fide intention to use the
applied-for mark

Opposer maintains that when applicant filed his
application, applicant lacked the requisite bona fide
intention to use the ENYCE mark in commerce on the
identified goods. The determination of whether applicant
had the requisite bona fide intention to use the mark ENYCE
on the goods identified in the application must be a fair
objective determination based on all of the circumstances.
See Lane Limited v. Jackson International Trading Company
Kurt D. Bruhl Gesellschaft m.b.G. & Co. KG, 33 USPQ2d 1352
(TTAB 1994); and Commodore Electronics Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d 1503 (TTAB 1993). The Board held in
Commodore, at 26 USPQ2d 1507, that “absent other facts which
adequately explain or outweigh the failure of an applicant
to have any documents supportive of or bearing upon its
Opposition No. 91162330
21
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).”
Applicant, in his answers to opposer’s interrogatories
and document production requests, indicated that he had no
documents evidencing an intent to use the ENYCE mark on
custom automotive accessories. With regard to his intent to
use the ENYCE mark, applicant testified as follow:

Q. Did you intend – when you filed this
[application] did you intend to actually use [the
ENYCE mark] on all these goods?

A. Again, there is no business model associated
with this until I receive permission to go ahead and
use it and then the business model will be produced.

Q. That’s not the question. When you filed this
application, serial number 78320850, did you intend
to use the mark ENYCE on fitted car covers?

A. Perhaps –

Q. It’s a yes or no answer.

A. I don’t have any – there’s no specific
intentions at this time.

Q. No. At that time though. At the time you filed
the application.

A. A car bra, if you want to call that a fitted car
cover.

Q. Is that a fitted car cover?

A. Yes, I guess.

Opposition No. 91162330
22
Q. Shift knobs?

A. Shift knobs, yes.

Q. You intended to use ENYCE on shift knobs.

A. Yes.

Q. On brake pads?

A. Probably not.

Q. No?

A. No.

Q. You didn’t intend to use ENYCE on brake pads?

A. No.

Q. License plate holders?

A. Probably.

Q. Spoilers?

A. Probably.

(Disc. dep. at 107-108).
This testimony offers no facts which explain or
outweigh the failure of applicant, when he filed the
application, to have documents which support his claimed
intent to use the ENYCE mark in connection with custom
automotive accessories. 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. Moreover, applicant’s mere response that he
intended to use the ENYCE mark on shift knobs does not
Opposition No. 91162330
23
suffice to establish a bona fide intention to use the mark.
The mere assertion of an intent to use the mark without
corroboration of any sort, whether documentary or otherwise,
is not likely to provide credible evidence to establish a
bona fide intention to use the mark. The context of the
other answers given here detracts, rather than contributes,
to the credibility of the assertion and thus supports the
conclusion that applicant has not established a bona fide
intention to use the mark when he filed the application.
Conclusion
In view of the foregoing, we conclude that applicant
did not have a bona fide intention to use the ENYCE mark in
commerce on custom automotive accessories when he filed the
involved application.
Decision: The opposition is sustained on the grounds
of likelihood of confusion and lack of a bona fide intention
to use the mark in commerce on the identified goods.