## Facts

- B.L.S. of Sarasota (BLSS) sought to enter the beer and malt liquor market with the mark “X 40 Wildcat.”
- On July 19, 1993, BLSS filed an intent-to-use (ITU) application with the USPTO to register “X 40 Wildcat” for beer and malt liquor.
- After the mark was allowed, BLSS was required to file a Statement of Use (SOU) showing that the mark was actually used in commerce on the identified goods.
- On August 28, 2000, BLSS filed its SOU, submitting a photograph of a bottle bearing an “X 40 Wildcat” label and a declaration from BLSS’s president, Brady Skinner, stating that the mark was first used at least as early as August 22, 2000 and was being used in interstate commerce.
- The SOU did not describe any sales, shipments, or other commercial activity showing how the mark was used on goods in commerce.
- On November 13, 2001, the USPTO issued a federal registration for “X 40 Wildcat.”
- On December 3, 2001, BLSS assigned the registration to Mountain Top Beverage Group, Inc. (Mountain Top).
- Two days later, Mountain Top sued Wildlife Brewing N.B., Inc., James Sorenson, and Pittsburgh Brewing Company (collectively, defendants), asserting Lanham Act claims for trademark infringement and false designation of origin based on defendants’ “Wildcat” malt liquor products, along with related state-law claims.
- Defendants counterclaimed (and asserted related third-party claims) seeking, among other relief, cancellation of Mountain Top’s federal registration.
- During discovery, defendants developed evidence that the bottle shown in BLSS’s SOU was a “dummy sample” that did not contain the product to be sold.
- Defendants also developed evidence that, from the 1993 ITU filing through the start of the lawsuit, neither BLSS nor Mountain Top made sales of, shipped, or meaningfully marketed goods bearing the “X 40 Wildcat” mark.
- Pittsburgh Brewing Company moved for summary judgment. Wildlife and Sorenson also moved for summary judgment seeking dismissal of Mountain Top’s Lanham Act claims and cancellation of the registration.

## Issues

1. Whether BLSS (and thus Mountain Top as assignee) made qualifying “use in commerce” of “X 40 Wildcat” sufficient to support an ITU-based registration when the SOU relied on a dummy sample and the record showed no sales, shipments, or marketing of goods under the mark.
2. Whether defendants were entitled to summary judgment on Mountain Top’s Lanham Act claims (infringement and false designation of origin) and related state-law claims if Mountain Top lacked enforceable trademark rights.
3. Whether Wildlife and Sorenson were entitled to summary judgment on their own counterclaims and third-party claims, or whether some of those claims required further proceedings.

## Decision

- The court granted Pittsburgh Brewing Company’s motion for summary judgment.
- The court granted in part Wildlife and Sorenson’s motion for summary judgment, holding that Mountain Top’s federal registration for “X 40 Wildcat” was unsupported by qualifying use in commerce and ordering the registration cancelled.
- Because Mountain Top could not rely on an enforceable registration or actual commercial use to establish protectable rights in the mark, the court entered summary judgment against Mountain Top on its Lanham Act claims for infringement and false designation of origin.
- The court also entered summary judgment against Mountain Top on related state-law claims to the extent they depended on Mountain Top’s asserted trademark rights in “X 40 Wildcat.”
- The court denied in part Wildlife and Sorenson’s summary judgment motion as to their affirmative counterclaims/third-party claims, leaving portions of those claims for later resolution.

## Legal Principles

- An ITU application can start the registration process before use, but a registrant must later show actual statutory “use in commerce” to obtain and keep a valid, enforceable registration.
- For goods, “use in commerce” requires that the mark be placed on the goods (or containers) and that the goods be sold or transported in commerce as part of real commercial activity, not merely for the purpose of securing a registration.
- A specimen tied to a staged or noncommercial presentation (such as a dummy sample not connected to sales or shipment of product) does not satisfy the statutory use requirement.
- A plaintiff asserting Lanham Act infringement or false designation must show enforceable rights in the mark; if the claimed registration is invalid for lack of qualifying use, the federal claims fail as a matter of law.
- A federal registration obtained without qualifying use may be cancelled, and summary judgment is appropriate where the record shows no genuine dispute that statutory use did not occur.

## Conclusion

In Mountain Top Beverage Group, Inc. v. Wildlife Brewing N.B., Inc., the district court concluded that “X 40 Wildcat” was never used in commerce in the manner required to support an ITU-based registration because the SOU relied on a dummy sample and the record showed no sales, shipments, or real marketing of goods under the mark; the court cancelled the registration, granted summary judgment for defendants on Mountain Top’s Lanham Act and related state-law claims, granted Pittsburgh Brewing Company summary judgment in full, and denied summary judgment on parts of Wildlife and Sorenson’s affirmative counterclaims and third-party claims.


Mountain Top Beverage Group, Inc. v. Wildlife Brewing N.B., Inc., 338 F. Supp. 2d 827 (2003)