## Facts

- Commodore Electronics Limited owned a registration for the mark CBM for “computer systems and their parts and fittings thereof.”
- CBM Kabushiki Kaisha filed an intent-to-use application to register CBM for a broad range of goods in International Classes 9 and 16, including various consumer electronics, office machines, and stationery.
- Commodore filed an opposition initially alleging likelihood of confusion based on its prior CBM mark.
- During discovery, Commodore learned the applicant had no documents evidencing a concrete plan to use CBM on the many goods listed in the application and related applications.
- Commodore moved for leave to amend its notice of opposition to add a claim that the applicant lacked a bona fide intention to use CBM in commerce at the time of filing, as required by Lanham Act § 1(b).
- The applicant opposed the amendment and moved to strike the amended pleading for failure to state a claim or, alternatively, sought summary judgment on the new claim.

## Issues

1. Whether the opposer should be granted leave to amend the notice of opposition under Fed. R. Civ. P. 15(a) to add a claim that the applicant lacked a bona fide intent to use the mark in commerce when it filed.
2. Whether the applicant was entitled to summary judgment on the lack-of-bona-fide-intent claim based on the discovery record.

## Decision

- The TTAB granted the opposer leave to amend under Rule 15(a), applying the principle that leave should be freely given when justice so requires absent undue prejudice or violation of settled law.
- The TTAB denied the applicant’s motion to strike the amended pleading, concluding the amended allegation stated a cognizable ground for opposition.
- The TTAB denied the applicant’s motion for summary judgment, holding the record did not eliminate genuine disputes of material fact concerning the applicant’s bona fide intent.
- The TTAB treated the applicant’s complete lack of documentary evidence of intent as sufficient to support (and potentially prove) the claim that the applicant lacked bona fide intent under § 1(b).

## Legal Principles

- Under Fed. R. Civ. P. 15(a), the TTAB generally permits amendments to pleadings when justice so requires, unless the amendment would unduly prejudice the opposing party or contravene settled law.
- An intent-to-use applicant must have a bona fide intention to use the mark in commerce on the identified goods as of the application filing date. (Lanham Act § 1(b).)
- A complete absence of documentary evidence supporting an applicant’s asserted intent to use may be sufficient evidence that no bona fide intent existed, making summary judgment for the applicant inappropriate where intent remains factually disputed.

## Conclusion

The TTAB allowed Commodore to add a § 1(b) lack-of-bona-fide-intent ground and refused to dispose of that claim on summary judgment, recognizing that an applicant’s total absence of documentary support for intent can sustain—and potentially prove—a lack of bona fide intent to use.


Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d 1503 (T.T.A.B. 1993)