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Hard Case to crack? Not this time.

Byline: Scott Slavick

"Flip for the lip"? Sure. But try to take a bite out of this trademark, and you may get a shock.

Hard Candy offers an array of cosmetic products so alluring you want to taste them. It offers brightly colored clothing and the brand includes fashion accessories, like eyewear. Hard Candy's products are sold exclusively at Walmart, and the company is clearly looking to extend its brand.

HardCandy Cases offers products just as attractive, but don't try to take a nibble. On its website, the company displays a suite of "device protection" hard cases for iPhones and iPads, Kindles, and other handheld devices, with names such as Neon Bubble, ShockDrop, and Squish.

Bet you can't guess what happens next. Right! A trademark dispute, which was recently decided at the Trademark Trial and Appeals Board: Hard Candy Cases, LLC v. Hard Candy, LLC.

Hard Candy, LLC had sought to register the mark Hard Candy for "leather goods, namely, backpacks, leather bags, suitcases, wallets, leather cases, leather handbags, leather key chains, leather pouches, traveling bags; purses." Notably, all the products it suggests it is applying for are proposed to be made of leather.

Hard Candy's application was opposed by HardCandy Cases, LLC, in connection with the latter's own use of the HardCandy Cases trademark, and on the grounds that at the time the former applied to register its trademark, it lacked the required bona fide intent to use its mark in connection with at least some of the goods identified in its application.

In its opposition, HardCandy Cases contended that Hard Candy had exhibited a pattern and practice of filing multiple intent-to-use trademark applications across multiple classes of goods and subsequently abandoning the underlying applications by failing to file statements of use. To support its argument, HardCandy Cases identified and entered into the record more than 20 previously filed intent-to-use applications that Hard Candy had abandoned in the recent past.

Its past actions notwithstanding, Hard Candy tried to focus the fight on the presently opposed application. It argued that it did have a bona fide intent to use the applied-for mark for leather goods at the time it filed its application and thereafter. With respect to leather goods specifically, Hard Candy testified that it intended to create a line of goods and purses to add to the categories that it sold at Walmart. It attested that the company had created diagrams and samples for such goods that it had presented to Walmart "around" the time of its application, and had continued to take steps to use the opposed mark since the application's filing date.


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Hard Candy relied on several documents and emails to support its claim, but as was shown during argument, only one such email predated the filing date of the opposition. In this single email, Hard Candy stated that it was the company's goal "to extend Hard Candy into a lifestyle brand." However, as HardCandy Cases pointed out, the only product specifically mentioned in the proposal was cosmetics--not leather goods. All Hard Candy's other emails and documents were created after the filing of the opposed application.

When seeking to prove a lack of bona fide intent, an opposer bears the initial burden of demonstrating by a preponderance of the evidence that the applicant lacked intent to use the mark on the identified goods. The opposer may meet this burden by establishing that documentary evidence on the part of the applicant regarding such intent is absent. If it does, the applicant may 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.

HardCandy Cases argued, quite logically, that documentary evidence regarding Hard Candy's intent to use the mark that predates Hard Candy's filing date and explicitly pertains to leather goods is lacking.

But the TTAB disagreed with HardCandy Case's premise that Hard Candy's evidence was useless simply because it did not specifically mention leather goods or because most of Hard Candy's documents postdate the filing of the opposed application. With respect to some of the documents not mentioning leather goods specifically, the Board felt that those documents still made clear that Hard Candy was considering whether to attempt to, as stated in the one email documented, "extend Hard Candy into a lifestyle brand."

Correspondingly, the Board stated that it believed Hard Candy when it explained that "lifestyle brands" are those which are expanded into "leather goods, jewelry, handbags, watches, and so on." Even though Hard Candy's intention to offer leather goods appears to have been largely contingent on Walmart's agreement to purchase those products, the Board felt that was still consistent with a bona fide intention to use.

HardCandy Case's argument that emails post-dating the challenged application was also not looked on favorably by the TTAB, because what mattered to the Board was the overall picture of what Hard Candy was trying to do and not the exact date on which its emails were written. The Board explained that in determining whether an applicant's intention to use is legitimate, the relevant circumstances will vary depending on the practices of the industry involved, and should be determined based on the standards of that particular industry. The Board described its judgment that in the "lifestyle brand" industry, developing and expanding the brand is more important than focusing on any particular product at any particular time. While the Board conceded in its opinion that Hard Candy's focus at the time it filed its application may have been more on expansion generally than on leather goods specifically, that need not mean that Hard Candy's intent to use its mark on leather goods (and other products) was not bona fide.

On the strength of these judgments, the TTAB dismissed the opposition from HardCandy Cases. Whether that dismissal comes as a shock to potential future opposers or not, however, all is not lost: The Board specifically recognized that abandonment of multiple intent-to-use applications for failure to file a statement of use may in certain circumstances be evidence that an applicant lacked a bona fide intent to use. But remember the Board's opinion if you're considering new and innovative opposition arguments. Or the going may be hard, indeed.
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Publication:Inside Counsel Breaking News
Date:Dec 15, 2014
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