## Facts

- M.Z. Berger & Co., Inc. manufactured, imported, and sold watches, clocks, and related goods; Swatch AG competed in the watch industry.
- Berger filed a Lanham Act § 1(b) intent-to-use (ITU) application on July 5, 2007 to register the mark “iWatch” for watches, clocks, and numerous related goods (including components such as clock dials and watch bands).
- Berger’s application included a declaration stating a bona fide intention to use (or permit use through a related company or licensee) the mark in commerce on the listed goods.
- The USPTO approved the application for publication on May 21, 2008.
- Swatch filed an opposition on October 22, 2008, asserting (as amended) that Berger lacked a bona fide intent to use “iWatch” in commerce at the time of filing; Swatch also asserted likelihood of confusion with “Swatch.”
- Before the TTAB, Berger relied largely on testimonial evidence regarding intent; the record contained little or no contemporaneous documentation commonly associated with actual commercialization planning (e.g., product designs, marketing plans, manufacturing/distribution arrangements, or licensing discussions).
- TTAB testimony included statements suggesting the goods identification was drafted broadly to keep options open rather than to reflect specific planned uses.

## Issues

1. Whether substantial evidence supported the TTAB’s finding that Berger lacked a bona fide intention to use the “iWatch” mark in commerce, as required for a § 1(b) ITU application, at the time of filing.
2. Whether Swatch could cross-appeal the TTAB’s rejection of the likelihood-of-confusion claim after already obtaining refusal of registration.

## Decision

- The Federal Circuit affirmed the TTAB’s decision sustaining the opposition on the ground that Berger lacked a bona fide intent to use “iWatch” in commerce at filing.
- The court held that substantial evidence supported the TTAB’s determination that Berger’s intent was to reserve rights in the mark rather than to pursue concrete commercial use.
- The court dismissed Swatch’s cross-appeal challenging the TTAB’s likelihood-of-confusion ruling because Swatch had received the requested relief (refusal of registration) and therefore lacked a basis to appeal.
- Because the refusal was affirmed on the intent ground, the likelihood-of-confusion claim was not reached on the merits on appeal.

## Legal Principles

- A Lanham Act § 1(b) ITU application requires a bona fide intent to use the mark in commerce as of the filing date.
- Bona fide intent demands more than a subjective assertion; it must be supported by objective evidence showing a firm intention to commercialize the mark.
- The absence of contemporaneous business records typically associated with product launch efforts may support a finding of no bona fide intent, particularly when testimony suggests a strategy of merely reserving a mark.
- TTAB findings on bona fide intent are reviewed for substantial evidence; the reviewing court asks whether a reasonable factfinder could reach the Board’s conclusion on the record, without reweighing evidence.
- An appellee that has obtained complete relief ordinarily cannot cross-appeal solely to challenge an adverse finding on an alternative ground; it may argue record-based grounds supporting the judgment without a cross-appeal.

## Conclusion

The Federal Circuit upheld refusal of registration for “iWatch” because substantial evidence supported the TTAB’s finding that the applicant lacked a bona fide intent to use the mark in commerce at filing, confirming that § 1(b) filings must be grounded in objective indicia of real commercialization plans rather than mere reservation of trademark rights.


M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015)