The Trustees of the Bonnie Cashin Foundation, Lucia Keller and David Baumv.Stephanie Day Lake Coach, Inc. v. Stephanie Day Lake

Trademark Trial and Appeal Board

Oct 12, 2016

No. 91213081 (T.T.A.B. Oct. 12, 2016)

KWM/gcp Mailed: October 12, 2016

Opposition No. 91213081 (Parent Case)
The Trustees of the Bonnie Cashin
Foundation, Lucia Keller and David Baum

v.
Stephanie Day Lake

Opposition No. 91213082

Coach, Inc.

v.

Stephanie Day Lake

Before Richey, Bergsman, and Pologeorgis,
Administrative Trademark Judges.

By the Board:

These consolidated proceedings now come before the Board for consideration of
(1) Stephanie Day Lake’s (“Applicant”) motion (filed June 1, 2016) for partial
summary judgment on the issue of priority of use; and (2) The Trustees of the Bonnie
Cashin Foundation, Lucia Keller and David Baum (“The Foundation”) and Coach,
Inc.’s (“Coach”) joint cross-motion (filed June 2, 2016) for summary judgment solely
on The Foundation’s pleaded claim that Applicant lacked a bona fide intent to use the
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition Nos. 91213081 and 91213082

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BONNIE CASHIN mark in commerce on the identified goods when she filed the
subject intent-to-use application. The motions have been fully briefed.
The Board initially notes that Coach did not assert a claim of lack of bona fide
intent in its notice of opposition. A party may not obtain summary judgment on an
issue that has not been pleaded. See Fed. R. Civ. P. 56(a); Asian and Western Classics
B.V. v. Lynne Selkow, 92 USPQ2d 1478, 1480 (TTAB 2009). Accordingly, we entertain
the cross-motion for summary judgment on the claim of lack of bona fide intent as it
pertains solely to The Foundation’s opposition, i.e., Opposition No. 91213081.
Background
Applicant seeks to register the mark BONNIE CASHIN, in standard character
form, for “backpacks, book bags, sports bags, bum bags, wallets and handbags; coin
purses; evening handbags; fashion handbags; handbags; handbags for ladies;
handbags, purses and wallets; leather handbags; umbrellas; wallets” in International
Class 18, and “coats; gloves; hats; jackets; jerseys; pants; robes; skirts; skirts and
dresses; sleeveless jerseys; sweaters; tops” in International Class 25.1
The Foundation and Coach each have filed a notice of opposition opposing
registration of Applicant’s mark.2 As grounds for its opposition, The Foundation
asserts the following claims: (1) likelihood of confusion based on common law rights

1 Application Serial No. 85525339, filed January 25, 2012 based on an assertion of a bona fide
intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b).

2 Proceeding Nos. 91213081 (parent) and 91213082 (child) were consolidated on January 9,
2015, when the Board granted The Foundation’s motion to consolidate as conceded and well-
taken. See 14 TTABVUE in Opposition No. 91213081.

Opposition Nos. 91213081 and 91213082

3
accruing from its predecessor, Bonnie Cashin, and her use and/or analogous
trademark use of the BONNIE CASHIN trademark and trade name; (2) likelihood of
confusion based on common law rights accruing from its use of THE BONNIE
CASHIN FOUNDATION trademark; (3) Applicant’s mark misdescribes the goods
identified in the subject application as goods designed by Bonnie Cashin; (4)
Applicant’s mark falsely suggests a connection with Bonnie Cashin; (5) fraud; and (6)
at the time she filed the subject application, Applicant lacked a bona fide intent to
use the BONNIE CASHIN mark in commerce for the goods identified in the subject
application.
In her answer to the Foundation’s notice of opposition, Applicant admits that The
Foundation owns two pending applications for the BONNIE CASHIN trademark: (1)
Application Serial No. 85804303 for goods in International Classes 18 and 25 based
on an intent to use the mark; and (2) Application Serial No. 85979323 for goods in
Class 18, in which an Amendment to Allege Use was filed on or about April 23, 2013.
Answer to The Foundation’s notice of opposition at ¶ 6. Applicant further admits that
The Foundation “never authorized or licensed Applicant to apply for or use the mark
BONNIE CASHIN,” and that “Applicant’s mark consists of nothing more tha[n] the
name of Bonnie Cashin. Id. at ¶¶ 11, 22. Applicant also admits the allegation that
In her application filed on or about January 25, 2012, Applicant, through
her authorized Attorney of Record, represented in the Declaration that
Applicant ‘believes the applicant to be the owner of the
trademark/service mark sought to be registered,’ that she ‘believes
applicant to be entitled to use such mark in commerce’ and that ‘to the
best of [Applicant’s] knowledge and belief no other person, firm,
corporation, or association has the right to use the mark in commerce,
either in the identical form thereof or in such near resemblance thereto
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4
as to be likely, when used on or in connection with the goods/services of
such person, to cause confusion, or to cause mistake, or to deceive.

Id. at ¶ 29. Applicant otherwise denies the salient allegations set forth in The
Foundation’s notice of opposition.
The Foundation’s Cross-Motion for Summary Judgment
We turn first to the Foundation’s cross-motion for summary judgment. In support
of thereof, The Foundation maintains that Applicant has failed to produce any
documents or corroborating evidence in support of her claimed intent to use the mark,
and that at the time she filed the subject application, Applicant had no concrete plans
of her own to bring the identified goods to market. The Foundation’s brief at p. 11.
The Foundation further contends that in her deposition testimony as well as in
published commentary, Applicant admits that she filed the subject application merely
to reserve the BONNIE CASHIN mark for her future use. Id. at pp. 1, 9. Accordingly,
The Foundation requests that the Board sustain this opposition proceeding because
there is no genuine dispute of material fact that Applicant did not have a bona fide
intent to use the BONNIE CASHIN mark on the identified goods when she filed the
subject application.
In support of its motion, the Foundation has submitted a (1) copy of the discovery
deposition of Applicant, (2) excerpts from Applicant’s written discovery responses, (3)
email correspondence from Applicant, (4) screen shots of The Foundation’s website,
(5) The Foundation’s mission statement and Executor’s Preamble establishing The
Foundation, and (6) an article about Bonnie Cashin from The New York Times,
among other documents.
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In her brief in opposition, Applicant argues that her written discovery responses
illustrate her bona fide intent to use the BONNIE CASHIN mark in commerce in
connection with the identified goods. Applicant’s response at p. 4. Applicant also
includes her own declaration detailing the steps she has taken to commercialize the
BONNIE CASHIN mark in connection with the identified goods, and offers exhibits
of recent press coverage in support of said commercialization efforts. Id. at ¶ 20.
Relying on her written discovery responses and her own declaration, Applicant
contends that this additional evidence outweighs her failure to provide
documentation evidencing her intent to use. Id. at p. 9.
In reply, The Foundation maintains that Applicant still has not offered any
objective evidence to support her claim that she had a bona fide intent to use the
BONNIE CASHIN mark in connection with the identified goods at the time she filed
the subject application. The Foundation argues that her post-application efforts to
write a book on Bonnie Cashin and seek out personal publicity in connection with the
book, as well as the work she has done as an employee of The Foundation, are not
indicative of her intent to use the BONNIE CASHIN mark in commerce in connection
with the identified goods. The Foundation’s reply at p. 2, 5. Finally, The Foundation
contends that the documents Applicant includes as exhibits to her declaration were
not previously produced in discovery, and represent Applicant’s activities long after
she filed her subject application. Id. at p. 2, n. 1.

Opposition Nos. 91213081 and 91213082

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Legal Standard
Summary judgment is an appropriate method of disposing of cases in which there
is no genuine dispute as to any material fact, thus leaving the case to be resolved as
a matter of law. See Fed. R. Civ. P. 56(a). The party moving for summary judgment
has the initial burden of demonstrating that there is no genuine dispute of material
fact remaining for trial and that it is entitled to judgment as a matter of law. See Fed.
R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1987).
In considering the propriety of summary judgment, all evidence must be viewed
in a light favorable to the nonmovant, in this case Applicant, and all justifiable
inferences are to be drawn in the nonmovant’s favor. Opryland USA Inc. v. The Great
American Music Show, Inc., 970 F.2d 847, 850, 23 USPQ2d 1471, 1472 (Fed. Cir.
1992). The Board may not resolve issues of material fact; it may only ascertain
whether such issues are present. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d
766, 767, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 970 F.2d at 850,
23 USPQ2d at1472; Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 202, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992).
When the moving party’s motion is supported by evidence sufficient to indicate
that there is no genuine dispute of material fact, and that the moving party is entitled
to judgment, the burden shifts to the nonmoving party to demonstrate the existence
of specific genuinely-disputed facts that must be resolved at trial. Enbridge, 92
USPQ2d at 1540. The nonmoving party may not rest on the mere allegations of its
pleadings and assertions of counsel, but must designate specific portions of the record
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7
or produce additional evidence showing the existence of a genuine dispute as to a
material fact for trial. See Fed. R. Civ. P. 56(c); Celotex, 477 U.S. at 324. In general,
to establish the existence of disputed facts requiring trial, the nonmoving party “must
point to an evidentiary conflict created on the record at least by a counterstatement
of facts set forth in detail in an affidavit by a knowledgeable affiant.” Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 941, 16 USPQ2d 1783,
1786 (Fed. Cir. 1990).
A. Standing
At the outset, we note that Applicant does not contest The Foundation’s standing
to pursue its opposition. In any event, we find that there is no genuine dispute of
material fact that The Foundation has standing to maintain this proceeding. The
Foundation pleaded (The Foundation’s notice of opposition at ¶ 6), and Applicant
admitted in her answer (Answer to The Foundation’s notice of opposition at ¶ 6), that
The Foundation is the owner of two pending applications for the BONNIE CASHIN
mark in connection with goods in International Classes 18 and 25, which have been
suspended pending the outcome of the subject application (i.e., Applicant’s
application has been cited as a potential bar to the registration of The Foundation’s
applications). See Empresa Cubana Del Tabaco v. Gen. Cigar Co., Inc., 753 F.3d 1270,
1275, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports, Inc., v.
Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Weatherford/Lamb, Inc. v. C&J Energy
Services, Inc., 96 USPQ2d 1834, 1837 (TTAB 2010).

Opposition Nos. 91213081 and 91213082

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B. Bona Fide Intent to Use
We turn next to whether The Foundation has established that there is no genuine
dispute as to a material fact for trial on its claim that Applicant lacked a bona fide
intent to use the BONNIE CASHIN mark in commerce as of the filing date of her
involved application. Trademark Act Section 1(b), 15 U.S.C. § 1051(b), states that “a
person who has a bona fide intention, under circumstances showing the good faith of
such person, to use a trademark in commerce” may apply for registration of the mark.
An applicant’s bona fide intent to use a mark must reflect an intention that is firm,
though it may be contingent on the outcome of an event (that is, market research or
product testing) and must reflect an intention to use the mark “in the ordinary course
of trade, . . . and not . . . merely to reserve a right in a mark.” Commodore Electronics
Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993) (quoting
Trademark Act Section 45, 15 U.S.C. § 1127, and citing Senate Judiciary Comm. Rep.
on S. 1883, S. Rep. No. 515, 100th Cong., 2d Sess. 24-25 (1988)).
As a general rule, the factual question of intent is particularly unsuited to
disposition on summary judgment. See Copelands’ Enterprises, Inc. v. CNV, Inc., 945
F.2d 1563, 1567, 20 USPQ2d 1295, 1299 (Fed. Cir. 1991). Nonetheless, the absence
of any documentary evidence on the part of an applicant regarding its bona fide intent
to use a mark in commerce constitutes objective proof sufficient to prove that the
applicant lacks a bona fide intention to use its mark in commerce. See Commodore,
26 USPQ2D at 1507. Indeed, the Board has held that where there is no evidence of
an applicant’s bona fide intent to use the mark at issue on the claimed goods or
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9
services, entry of summary judgment on a claim that the applicant had no bona fide
intent to use the mark in commerce when he filed his involved application may be
warranted. See Honda Motor Co., Ltd. v. Winkelmann, 90 USPQ2d 1660, 1664 (TTAB
2009). An 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. v. Jackson International Trading Co., 33 USPQ2d 1351, 1355
(TTAB 1994).
In determining the sufficiency of documentary evidence demonstrating bona fide
intent, the Board has held that the Trademark Act does not expressly impose “any
specific requirement as to the contemporaneousness of an applicant’s documentary
evidence corroborating its claim of bona fide intention. Rather, the focus is on the
entirety of the circumstances, as revealed by the evidence of record.” See Lane, 33
USPQ2d at 1356.
In this case, The Foundation has proferred Applicant’s February 29, 2016 written
discovery responses, as well as statements she made during her April 11, 2016
discovery deposition, which The Foundation asserts demonstrates that Applicant had
no concrete plans at all to use the BONNIE CASHIN mark in connection with the
identified goods. In particular, when asked during her discovery deposition what
documents she has to support her intent to use the BONNIE CASHIN mark in
connection with the identified goods at the time she filed her trademark application,
Applicant only pointed to the declaration her counsel signed when filing the subject
application. The Foundation’s brief, Exhibit 1 at 146:2-9. Applicant further admits
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10
that she has not used the mark in commerce (The Foundation’s brief, Exhibit A at
Interrogatory No. 7), nor has she taken any steps to use the mark in commerce since
2012 (The Foundation’s brief, Exhibit 1 at 146:10-12). Applicant’s testimony and
discovery responses indicate that her business strategy for marketing and
advertising her products under the mark has not been finalized (The Foundation’s
brief, Exhibit A at Interrogatory No. 8; The Foundation’s brief, Exhibit 1 at 147:3-5);
she hasn’t commenced advertising (The Foundation’s brief, Exhibit A at Interrogatory
No. 11); she hasn’t determined specific channels of trade or volume of goods to be
distributed through such channels, but she intends to sell products online, in print,
in catalogs, at industry trade shows, and in retail stores (The Foundation’s brief,
Exhibit A at Interrogatory Nos. 9 and 13; The Foundation’s brief, Exhibit 1 at 146:20-
147:2); she hasn’t conducted formal consumer research yet but she intends to
advertise, promote and sell the identified goods under the mark to “discerning women
of all ages” (The Foundation’s brief, Exhibit A at Interrogatory Nos. 15 and 17; The
Foundation’s brief, Exhibit 1 at 146:20-25); and she has not yet developed product
designs or mockups to be used in connection with the mark (The Foundation’s brief,
Exhibit 1 at 146:13-19).
Moreover, The Foundation contends that Applicant’s efforts to commercialize the
BONNIE CASHIN mark while she served as its Creative Director were made on
behalf of The Foundation and occurred well before Applicant’s January 25, 2012 filing
date, and therefore cannot support her intent to use the BONNIE CASHIN mark at
the time she filed her application. Specifically, The Foundation points to Applicant’s
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11
deposition testimony that she served as the Creative Director of The Foundation,
where she “represented [T]he [F]oundation in all endeavors . . . related to academic,
curatorial, editorial, [and] research projects” from about 2006 until about 2012.3 The
Foundation’s brief, Exhibit 1 at 18:19-20:14, 66:15-70:10. Applicant registered the
domains bonniecashinfoundation.com and bonniecashinfoundation.org, which she
collectively refers to as the “[F]oundation website,” and admits that The Foundation
reimbursed her for server usage. Id. at 62:8-63:6, 110:4-10. Applicant also admits that
in 2009, she drafted the mission statement appearing on the Foundation website,
which reads that “in addition to its endowment, [T]he [F]oundation holds the
exclusive right to authorize the use of [Bonnie Cashin’s] name, designs, writings and
illustrations and to hold and renew registration of her name as a trademark.”4 Id. at
105:5-21. As creative director, Applicant also “investigated licensing opportunities for
the foundation,” and participated in meetings between the The Foundation and
International Management Group and licensing firm G-III at least as early as 2006.5
Id. at 66:10-67:24, 73:1-14, 74:17-75:21, 80:6-13. Applicant further arranged to sell
stationary featuring sketches by Bonnie Cashin and a Neal Decker tote bag on the

3 Applicant notes that she was never notified by The Foundation that she had been
terminated. The Foundation’s brief, Exhibit 1 at 19:19-20:14.

4 The Board notes that archived copies of The Foundation’s website are unavailable because
Applicant permanently removed the Foundation website and, while the current proceedings
were pending, failed to take any steps to preserve the website’s content. The Foundation’s
brief at p. 5.

5 The Foundation does not offer any evidence to indicate on what date the meeting with
International Management Group occurred.
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Foundation website around 2006, for the benefit of The Foundation. Id. at 83:24-
84:16, 103:24-104:2; see also The Foundation’s brief, Exhibit 9.
The Foundation further contends that Applicant’s statements to the press and in
her deposition indicate Applicant’s intent to reserve the BONNIE CASHIN mark for
her future use, despite The Foundation’s claim to the mark. Upon Bonnie Cashin’s
death in 2000, Applicant asked a member of (what would later become) The
Foundation to “register the [BONNIE CASHIN] trademark to protect it for [her]
future use.” The Foundation’s brief, Exhibit 1 at 39:18-40:12. When asked what steps
she took to pursue her intent to use the mark in commerce before she filed the subject
application, Applicant stated that her “step to start a Bonnie Cashin business, a bona
fide interest, began with applying for this trademark.” Id. at 140:20-141:3. The
Foundation also points to a May 10, 2016 article in The New York Times in which
Applicant indicates that if she prevails in the present opposition, “Isabel Toledo
would be among the first designers she would call to reinvigorate the Cashin brand.”
The Foundation’s brief, Exhibit 16.
Taken together, the evidence that The Foundation submits in support of its
motion for summary judgment is sufficient to demonstrate that Applicant has taken
no actual steps toward preparing to use the BONNIE CASHIN mark on the identified
goods and that Applicant merely had a subjective intent to use the BONNIE CASHIN
mark on the identified goods when she filed the involved application. Based on the
foregoing, we find that The Foundation has met its initial burden of establishing that
there is no genuine dispute of material fact remaining for trial on its claim that
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Applicant did not have a bona fide intent to use the BONNIE CASHIN mark in
commerce when she filed the involved application.
Federal Rule of Civil Procedure 56 requires a nonmoving party to go beyond the
pleadings and to set out specific facts showing a genuine dispute for trial. See Fed. R.
Civ. P. 56; Celotex, 477 U.S. at 324. To raise a genuine dispute as to a material fact,
Applicant must rely on specific facts that establish that she possessed an ability and
willingness to use the BONNIE CASHIN mark as a mark for her identified goods
when she filed the involved application. See Honda Motor Co., 90 USPQ2d at 1663-
64.
Applicant’s arguments in her brief and statements in her declaration do not
provide specific facts in support of her intent to use the BONNIE CASHIN mark in
connection with her identified goods at the time she filed the involved application.
See, e.g., Honda Motor Co., 90 USPQ2d at 1664. Applicant’s evidence consists of (1)
her own declaration; (2) Applicant’s responses to Opposers’ second set of written
discovery (Applicant’s brief, Exhibit A); (3) an Amazon.com listing for Applicant’s
book, Bonnie Cashin: Chic is Where You Find it, published April 12, 2016 (Applicant’s
brief, Exhibit E); and (4) several press articles discussing Ms. Cashin’s career,
Applicant’s relationship with Ms. Cashin, and/or Applicant’s book (Applicant’s brief,
Exhibits B-D and F-K).
In her declaration, Applicant states that she completed her master’s thesis (in
1999) and doctoral dissertation (in 2009) on the life and works of Bonnie Cashin, and
she owns Bonnie Cashin’s personal design archive. Applicant’s declaration at ¶¶s 4,
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6. She claims to have worked for The Foundation until 2011. Id. at ¶ 8. After filing
the subject application, Applicant claims to have consulted with Joel Waller and Loie
Maxwell. Id. at ¶¶s 12-14. She states that Mr. Waller advised her “to wait until the
BONNIE CASHIN trademark became registered, as no significant firm would be
interested in licensing until that was complete.” Id. at ¶ 12. Applicant also claims to
have engaged in several activities to build awareness for the BONNIE CASHIN
brand, including writing her book Bonnie Cashin: Chic is Where You Find it, speaking
with the press about her book and Bonnie Cashin’s career, maintaining social media
and website presence, conducting research regarding brand revivals, and conducting
museum and gallery exhibitions. Id. at ¶¶s 15-20. Applicant further explains that the
present opposition has “slowed” her efforts to commercialize the BONNIE CASHIN
brand. Id. at ¶ 19. Among the various press articles Applicant attaches to support her
declaration is an article that mentions the present opposition: “Lake is now embroiled
in a legal battle for ownership of the trademark to Bonnie Cashin’s name. For Lake,
securing the trademark is vital to protecting Cashin’s legacy. If she is granted it, Lake
intends to launch a Bonnie Cashin label, which would feature reissued designs and
new pieces inspired by Cashin and interpreted by an appointed designer.” Applicant’s
brief at Exhibit H (emphasis added).
Applicant also relies on her discovery responses, which she claims illustrate her
bona fide intent to use the mark. Specifically, Applicant argues that her discovery
responses detail the steps she took to file the involved application after learning that
The Foundation’s previously filed application for the mark had been abandoned (The
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15
Foundation’s brief, Exhibit A at Interrogatory No. 3); discuss her master’s thesis,
doctoral dissertation, and book, which detail Bonnie Cashin’s career (id. at
Interrogatory No. 5); identify the persons to whom and mediums through which the
identified goods bearing the BONNIE CASHIN mark are intended to be listed (id. at
Interrogatory Nos. 9 and 15); and illustrate the online presence Applicant has
established using the Foundation website (id. at Interrogatory No. 10).
Applicant’s declaration and written discovery responses offer no facts which
explain or outweigh the failure of Applicant, when she filed the application, to have
documents which support her claimed intent to use the BONNIE CASHIN mark in
connection with the identified goods. See L.C. Licensing, Inc. v. Berman, 86 USPQ2d
1883, 1891 (TTAB 2008). Applicant’s curatorial activities and online marketing
conducted as an employee of The Foundation, on behalf of The Foundation, as well as
her April 2016 book and press covering her book release, are irrelevant. From 2006
until March 21, 2014, when Applicant removed the statement on The Foundation’s
website indicating that The Foundation holds exclusive rights in the BONNIE
CASHIN mark and changed the copyright notice to remove The Foundation’s name
and include her own name, Applicant represented to consumers that the BONNIE
CASHIN mark identified The Foundation as the source of various goods and services
provided through the website. The April 2016 book and its media coverage were all
well after the filing date of the application at issue. Applicant’s conversations with
Mr. Waller after filing the subject application, as well as statements she made to the
media in 2016 about her intentions for the BONNIE CASHIN brand if she prevails
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in the present opposition and her deposition testimony that her first step toward
launching a BONNIE CASHIN brand was filing the involved application, all detract
from the credibility of her assertion of intent. See Boston Red Sox Baseball Club Ltd.
Partnership v. Sherman, 88 USPQ2d 1581, 1587-88 (TTAB 2008); L.C. Licensing, 86
USPQ2d at 1892.
Moreover, Applicant’s argument in her brief regarding her decision to defer
business plans in light of the subject opposition does not explain her failure to have
any documents or other corroborating evidence that show her intent to use the mark
at the time the application was filed. See L.C. Licensing, 86 USPQ2d at 1891.
Applicant’s argument that the declaration accompanying the involved application is
one such document that supports her intent to use the mark is unavailing. “If the
filing and prosecution of a trademark application constituted a bona fide intent to use
a mark, then in effect, lack of a bona fide intent to use would never be a ground for
opposition or cancellation, since an inter partes proceeding can only be brought if the
defendant has filed an application.” Research in Motion Ltd. v. NBOR Corp., 92
USPQ2d 1926, 1931 (TTAB 2009). Finally, Applicant’s broad and general discovery
responses indicating she intends to sell and advertise handbags, clothing and related
items under the mark to women through traditional channels of trade are not
supported by any specific facts, or by marketing plans or any other evidence. See
Boston Red Sox, 88 USPQ2d at 1587. Therefore, after having considered the evidence
and arguments submitted by the parties in connection with the motion, and viewing
that evidence in the light most favorable to Applicant, we find there is no evidence of
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Applicant’s bona fide intent to use the mark on the identified goods when she filed
her application.
Because Applicant has not established that there is any genuine dispute of
material fact as to her bona fide intent to use the mark on the identified goods, The
Foundation’s cross-motion for summary judgment is GRANTED. Having reached
this conclusion, we need not consider Applicant’s motion for summary judgment on
the issue of priority of use.
In view thereof, The Foundation’s opposition is sustained, judgment is entered
against Applicant on The Foundation’s claim of lack of bona fide intent, and
registration to Applicant is refused.
Further Proceedings
“Where a final disposition has been entered as to some, but not all, of the cases
in a consolidated proceeding, the remaining cases will no longer be considered
consolidated with the case for which a final disposition has been entered.” TBMP
§ 511 (2016). Since we have entered a final disposition with regard to Opposition No.
91213081, that proceeding will no longer be considered consolidated with Opposition
No. 91213082. Opposition No. 91213082 will proceed as a single case.
In light of our dispositon of Opposition No. 91213081, Coach is allowed until
twenty (20) days from the mailing date of this order to advise the Board whether it
wishes to obtain judgment on its asserted claims or have its opposition dismissed
without prejudice as moot, failing which Coach’s opposition will be dismissed without
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prejudice as moot. Coach should file its response to this Order in its own opposition
proceeding, i.e., Opposition No. 91213082.