Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1251859
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`Filing date:
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`12/02/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`91253283
`
`Party
`
`Correspondence
`address
`
`Submission
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`Filer's name
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`Filer's email
`
`Signature
`
`Date
`
`Defendant
`Cheema Properties LLC
`
`ROBERT RYMEK
`BUSINESS LAWYERS GROUP
`735 SUNRISE AVE, SUITE 115
`ROSEVILLE, CA 95661
`UNITED STATES
`Primary email: no.1lawyer@gmail.com
`916-783-9131
`
`Brief on Merits for Defendant
`
`Robert Rymek
`
`no.1lawyer@gmail.com
`
`/Robert Rymek/
`
`12/02/2022
`
`Attachments
`
`Cheema Trial Brief 1.pdf(495508 bytes )
`
`

`

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`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Dishoom Limited,
`
` Opposer and Counterclaim Registrant
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` v.
`
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`Cheema Properties LLC,
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` Applicant and Counterclaim Petitioner
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`
`
`
`
`
`
`
`
`Opposition No. 91253283
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`APPLICANT AND COUNTERCLAIM PETITIONER’S TRIAL BRIEF
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`1
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`

`

`Index of Cases
`
`Case Name
`
`Pages
`
`A&H Sportswear Co. v. William W. Yedor, 2019 USPQ2d 111513 (TTAB 2019)
`
`12
`
`Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008)
`
`Bose Corp. v. QSC Audio Prods. Inc., 63 USPQ2d 1303
`
`Commodore Elecs. Ltd. v. CBM K. K., 26 USPQ2d 1503 (TTAB 1993)
`
`Cunningham v. Laser Golf Corp., 55 USPQ2d 1842 (Fed.Cir. 2019)
`
`Elvis Presley Enters. v. Capece, 141 F.3d 188 (5th Cir.1998)
`
`13,14
`
`26
`
`11,13
`
`19
`
`18
`
`Empresa Cubana Del Tabaco v. Gen. Cigar Co., 111 USPQ2d 1058 (Fed. Cir. 2014). 18
`
`Honda Motor Co. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009)
`
`In re E. I. du Pont de Nemours & Co., 177 USPQ 563 (C.C.P.A. 1973)
`
`In re Knapp-Monarch Co. 132 USPQ 6 (1961)
`
`In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009);
`
`In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).
`
`International Ass'n of Machinists and Aerospace Workers v. Winship Green Nursing
`Ctr., 103 F.3d 196, 200 (1st Cir.1996)
`Lane Ltd. v. Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994).
`L.C. Licensing Inc. v. Berman, 86 USPQ 1883 (TTAB 2008)
`L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1443 (TTAB 2012)
`M.Z. Berger & Co. v. Swatch AG, 114 USPQ2d 1892, 1897 (Fed. Cir. 2015)
`
`National Distillers & Chemical Corporation v. William Grant and Sons, Inc., 184
`USPQ 34 (CCPA 1974)
`
`Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 73
`USPQ2d 1689, 1691 (Fed. Cir. 2005)
`
`Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1930 (TTAB 2009)
`
`SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, (TTAB
`2010)
`
`13
`
`19
`
`10
`
`20
`
`20
`
`18
`
`12,13
`
`11
`
`12
`
`10,12,16
`
`20,23
`
`19
`
`11
`
`13
`
`Société des Produits Nestlé S.A. v. Cándido Viñuales Taboada, 2020 USPQ2d 10893
`(TTAB 2020)
`
`14,15
`
`Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis
`Kooperatifleri Birligi, 99 USPQ2d 1545, (TTAB 2011)
`
`Swiss Grill Ltd v. Wolf Steel Ltd., 115 USPQ2d 2001 (TTAB 2015)
`
`Vitek Sys., Inc. v. Abbott Labs., 675 F.2d 190, 192 (8th Cir.1982)
`
`13
`
`10,12,14
`
`18
`
`
`
`
`
`
`
`
`
`2
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`

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`I.
`PRELIMINARY STATEMENT
`Applicant and Counterclaim Petitioner Cheema Properties LLC (“Cheema”) submits this
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`combined trial brief:
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`(1) in support of Cheema’s Counterclaim seeking to have the trademark
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`registration of Counterclaim Respondent Dishoom Ltd. (“Dishoom”) cancelled,
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`based upon a Dishoom’s lack of bona fide intent to use the mark in the United
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`States at the time its application was filed; and
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`(2) in response to Dishoom’s opening trial brief opposing Cheema’s trademark
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`DISHYUM.
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`Because cancellation of Dishoom’s registration would render Dishoom without standing
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`to bring its statutory opposition claim to Cheema’s mark, and thereby obviate the need to address
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`Dishoom’s opposition claims, Cheema will begin by addressing why Dishoom’s registration
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`should be cancelled, before replying to Dishoom’s opposition.
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`II.
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`THE RECORD
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`Dishoom submitted testimony from its co-founder, Kavi Thakrar, by testimonial
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`declaration dated March 22, 2022, which includes Exhibits A through T referenced therein. 22
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`TTABVUE.
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`Dishoom also submitted during its testimony period Dishoom’s Notice of Reliance on
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`Discovery Responses dated March 22, 2022, which includes Exhibit 1 referenced therein. 23
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`TTABVUE.
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`Applicant submitted testimony of its CEO, Ramandeep Cheema, by testimonial
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`declaration dated May 21, 2022, which includes Exhibits 1-6 referenced therein. 24 TTABVUE.1
`
`
`1 Cheema notes for explanatory purposes that Cheema has tendered both 24 TTABVUE and 25 TTABVUE which
`overlap for technical purposes. Specifically, for purposes of providing the Board with filings that can be searched in
`their entirety. For purposes of ease of reference, and consistency Cheema will reference the more complete 24
`
`
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`3
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`

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`
`
`III.
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`STATEMENT OF FACTS
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`A. Dishoom’s Application for its DISHOOM Mark
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`Dishoom owns and operates a regional Indian food chain of restaurants under the mark
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`DISHOOM which are modeled after the old Iranian cafes of Bombay, in an old-world
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`atmosphere. 22 TTABVUE 1-2, ¶¶ 2, 4. As of March 2022, there were eight DISHOOM
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`restaurants all of which are located in United Kingdom, with no U.S. locations. 22 TTABVUE 2,
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`¶ 5.
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`On November 7, 2016, Dishoom applied to register the DISHOOM mark, for all of the
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`following uses:
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`Services for providing food and drink; take-out restaurant
`services, namely, food and drink takeaway services; self-service
`restaurants; snack bars; bar services, namely, public house
`services, micro pub services, cocktail bar services, wine bar
`services, and bar services; restaurant services; canteen services;
`cafeteria services; catering; catering services, namely, the
`catering of banquets; banqueting services, namely, providing
`banquet and social function facilities for special occasions;
`provision of conference and meeting facilities; provision of
`banquet and social function facilities for special occasions,
`namely, weddings; providing facilities for events, namely,
`exhibitions; arranging temporary housing accommodations;
`making reservations and bookings for meals in taverns in the
`nature of public houses, and for meals at restaurants and hotels;
`hotel services; tavern services, namely, public house services;
`provision of conference and meeting venues; provision of banquet
`and social function venues for special occasions, namely,
`weddings; providing venues for events, namely, exhibitions
`
`
`with such application being granted on April 10, 2018. 22 TTABVUE 5, ¶ 22 & Ex. S.
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`
`
`
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`TTABVUE which includes searchable Exhibits, but notes that the testimony itself is in searchable format in 25
`TTABVUE for the Board’s convenience.
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`
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`
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`4
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`

`

`B. Dishoom’s Lack of Bona Fide Intent to use its Mark.
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`In the more than half a decade that has passed since the filling of its trademark
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`application, Dishoom has failed to use the mark in the United States for any of these claimed
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`intended uses. 24 TTABVUE 9 ¶ 55. Dishoom attributes this failure to “the Covid-19”
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`epidemic. 22 TTABVUE 4, ¶ 17.
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`Although Dishoom claims that it has been planning an expansion into the United States
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`since 2016, Dishoom’s Annual Reports for the years 2015 through 2020 instead contrarily reveal
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`that: (1) 100% of Dishoom’s revenues were derived exclusively from restaurant sales occurring
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`within United Kingdom commerce; (2) Dishoom had no sales in United States commerce; (3)
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`Dishoom had no plans in place for any bars, hotels, restaurants, etc. in the United States at the
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`time Dishoom filed its trademark application; (4) although these reports contain sections
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`expressly identifying Dishoom’s planned future development, such sections make no mention of
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`any planned expansion in the U.S.; (5) the only planned expansion was limited to “potential new
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`restaurant openings in the UK” 24 TTABVUE p.10 ¶¶ 58-59. Ex.1 p. 14; Ex.2 p. 14; Ex.3 p. 16,
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`20; Ex.4 p.16, 20; Ex. 5 p. 17; Exhibit 6 p. 9, 24.
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`The only evidence Dishoom offers in the in an attempt to support its alleged intent to use
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`its mark in United States at the time of its application consists of evidence not even remotely
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`contemporaneous to the filing of its application, specifically: (1) a preliminary investigation into
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`the “viability” and “feasibility” of a “possible” expansion into the United States and a 2020 trip
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`to the U.S. (22 TTABVUE ¶ 18-20); and (2) the existence of a Dishoom cookbook that is
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`currently “available” for sale in the United States authored by one of the founders of Dishoom
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`and a chef (as opposed to Dishoom itself) and published by “Bloomsbury Publishing”. 22
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`TTABVUE 3-5, ¶¶ 13, 21 & Exs. J, R.:
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`
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`5
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`

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`Dishoom has not presented any evidence as to how many (if any) of such cookbooks
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`were sold in the United States or to U.S. consumers. 22 TTABVUE. Nor has Dishoom
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`presented any evidence of any U.S. activity in the form of, licensing, registrations, vendor or
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`supplier contracts, leases, equipment or furniture purchases, employee hiring, inventory
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`establishment, “coming soon” advertisements, facility construction, permits, etc. to suggest that
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`it is currently actively proceeding with any hotels, restaurants, etc. or any other of the uses
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`claimed in its 2016 trademark application. 22 TTABVUE.
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`
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`C. Cheema’s Application for its DISHYUM Mark
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`Cheema’s CEO, Ramandeep Cheema is an experienced restaurateur who has owned and
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`operated dozens of restaurants ranging from a traditional Indian restaurant chain to a variety of
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`quick-serve restaurants. 24 TTABVUE 1, ¶ 4. In late 2018, Cheema began developing a new
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`concept for a “non-traditional modern Indian Food restaurant.” 24 TTABVUE 2, ¶ 7. After
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`consideration of many names containing or derived from YUM, Cheema eventually decided
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`upon DISHYUM because it was a unique combination of words that he perceived as being subtly
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`suggestive of tasty food. 24 TTABVUE 2-3, ¶¶ 8-20.
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`On March 23, 2019, Cheema applied to register “DISHYUM” based on an intent to use
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`the mark in connection with “restaurant services” in International Class 43. 25 TTABUVE ¶ 24.
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`The USPTO examiner reviewed the mark and approved it for publication. The basis for
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`Cheema’s Application was under Section 1(b) of the Trademark Act, 15 U.S.C. 1051(b). See 25
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`TTBAVUE 7-8, ¶¶ 44, 47, 51; 23 TTABVUE Ex. 1.
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`
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`6
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`D. Cheema Learns of the existence of Dishoom.
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`One day in October of 2019, Cheema learned a lawyer had sent a letter demanding that
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`the Cheema withdraw its trademark application and cease using its new DISHYUM name. 25
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`TTBAVUE p.4, ¶¶ 27. The lawyer said she represented “Dishoom Limited”, which Cheema later
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`discovered was a company that operated a few traditional Indian restaurants in the United
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`Kingdom. 25 TTBAVUE p.4, ¶¶ 28.
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`Upon learning of Dishoom’s existence via Dishoom’s demand letter, and after
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`researching into Dishoom’s UK restaurants, the Cheema went to extraordinary lengths to make
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`sure that their planned modern, clean, brand stylization and menus, décor, etc. would be clearly
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`and obviously different and distinctive from Dishoom’s older and more traditional old-world
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`style, décor, menu, etc. 25 TTBAVUE p.7, ¶43. Cheema also reached out to Dishoom noting
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`that Cheema was willing to work cooperatively with Dishoom in this regard, to help ensure that
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`the already extremely remote possibility of any confusion between the two dissimilar marks and
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`brands would be completely eliminated, via additional brand differentiation techniques, that
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`would further emphasize the stark contrast between Cheema’s modern new U.S. restaurants and
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`Dishoom’s traditional old-world style restaurants located in the U.K. 25 TTBAVUE p.7, ¶44 .
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`Dishoom rejected such overtures.
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`Dishoom thereafter filed the instant opposition to Cheema’s trademark and Cheema filed
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`the instant counterclaim for cancellation based upon Dishoom’s above noted lack of intent to use
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`at the time it filed its application.
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`7
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`

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`
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`E. Dishoom’s Evidence of its Likelihood of Confusion Claim.
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`Dishoom presented evidence that its United Kingdom restaurants have occasionally been
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`mentioned in, and reviewed in, various publications, including the Michelin Guide and some
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`U.S. publications. 22 TTABVUE 3, ¶¶ 7-8 & Exs. D, E, F, G. However, Dishoom has
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`provided no expert or survey evidence to establish the comparative level of such exposure or
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`brand awareness resulting from these instances of being mentioned in such publications. 22
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`TTABVUE. Dishoom has similarly provided no expert testimony, no market share reports, no
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`survey information, in support of its claim of a likelihood of confusion between the marks. 22
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`TTABVUE. Dishoom has similarly not provided any expert testimony, market share reports,
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`survey information, studies, or other similar materials regarding its brand recognition in the
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`United States. 22 TTABVUE.
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`Dishoom has also asserted a likelihood of confusion because Dishoom is a well-known
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`brand because it has almost 45,000 Facebook followers and almost 40 Twitter followers
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`worldwide. 22 TTABVUE p.10 ¶ 15. However, Dishoom has not provided any evidence as to
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`how many (if any) of such followers are in the United States. 22 TTABVUE. Nor, has Dishoom
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`provided any expert testimony or comparative or contextual evidence to show whether the
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`number of followers it has represents or establishes a high level or exceedingly low level of
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`brand awareness in the United States. 22 TTABVUE.
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`Dishoom also presented evidence that its United Kingdom restaurants have occasionally
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`been mentioned in, and reviewed in, various publications, including the Michelin Guide and
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`some U.S. publications in support of its claim that it is a famous mark. 22 TTABVUE 3, ¶¶ 7-8
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`& Exs. D, E, F, G. However, Dishoom has not provided any expert or survey evidence to
`
`
`
`8
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`

`

`establish the comparative level of such exposure, or the brand awareness resulting from these
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`instances of being mentioned in such publications. 22 TTABVUE. Dishoom has similarly
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`provided no expert testimony, nor any market share reports, nor survey information, that indicate
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`that it is a well-known brand. 22 TTABVUE.
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`
`
`IV. ARGUMENTS
`
`
`A. DISHOOM’S MARK REGISTRATION SHOULD BE CANCELLED BECAUSE AT THE TIME
`DISHOOM APPLIED TO REGISTER ITS MARK, DISHOOM LACKED A BONA FIDE INTENT TO
`USE THE MARK IN U.S. COMMERCE FOR THE GOODS AND SERVICES LISTED.
`
`Trademark Act Sections 60(5) and 66(a) require applicants to verify that they have a bona
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`fide intent to use the mark in U.S. commerce for all of the goods and serves listed in their
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`application as of the application filing date. 15 U.S.C. §§ 1141(5), 1141f(a).
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`Here, Dishoom filed its trademark application in the United States in 2016 seeking to
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`register its mark in conjunction with all of the following goods and/or services:
`
`“Services for providing food and drink; take-out restaurant
`services, namely, food and drink takeaway services; self-service
`restaurants; snack bars; bar services, namely, public house
`services, micro pub services, cocktail bar services, wine bar
`services, and bar services; restaurant services; canteen services;
`cafeteria services; catering; catering services, namely, the catering
`of banquets; banqueting services, namely, providing banquet and
`social function facilities for special occasions; provision of
`conference and meeting facilities; provision of banquet and social
`function facilities for special occasions, namely, weddings;
`providing facilities for events, namely, exhibitions; arranging
`temporary housing accommodations; making reservations and
`bookings for meals in taverns in the nature of public houses, and
`for meals at restaurants and hotels; hotel services; tavern services,
`namely, public house services; provision of conference and
`meeting venues; provision of banquet and social function venues
`for special occasions, namely, weddings; providing venues for
`events, namely, exhibitions”
`
`
`
`9
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`

`

`In the more than half a decade that has passed since then, Dishoom has failed to use the
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`mark in the United States for any of these claimed intended uses. 24 TTABVUE 9 ¶55.
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`Instead, Dishoom, by its own admission, still simply operates a few restaurants in the United
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`Kingdom and owns and operates no bars, restaurants, hotels, wedding venues, conference
`
`meeting venues, housing accommodations, etc. in the United States. 22 TTABVUE 2 ¶ 5
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`Colloquially, as any parent can attest, simply because your child promises that they
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`really, really, intend cleaning their room, if it has still not been cleaned half a decade later, it is a
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`pretty good indicator that they never really intended on cleaning their room. It is for this reason
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`that a trademark application in the name of the mark identifying the goods or services or the
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`trademark clearance search for the same, without more will not be sufficient evidence of an
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`applicant’s bona fide intent to use the mark in commerce. See Swiss Grill Ltd v. Wolf Steel Ltd.,
`
`115 USPQ2d 2001 (TTAB 2015). (citing M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114
`
`USPQ2d 1892, 1897 (Fed. Cir. 2015) and noting that the Applicant’s requisite intent must be
`
`“firm,” “demonstrable” with “objective evidence of intent” and “more than a mere subjective
`
`belief.”
`
`Dishoom attempts to pass this more than half a decade long failure to take any
`
`meaningful steps towards preparing to open a hotel, restaurant, etc. in the U.S. as being due to
`
`the “Covid-19 epidemic.” 22 TTABVUE 4 ¶17. However, such a “blame Covid” excuse is
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`fatally flawed because it is common knowledge that the Covid-19 epidemic did not occur until
`
`2020, many years after Dishoom filed their application, and is thus irrelevant to explain away
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`Dishoom’s failure from 2016 through 2020 to take any substantive steps towards using their
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`mark for the services claimed in their application. See generally In re Knapp-Monarch Co. 296
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`
`
`10
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`

`

`F.2d 230, 132 USPQ 6 (1961) concluding that such facts of common knowledge are appropriate
`
`for judicial notice; accord L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008).
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`Indeed, Dishoom makes no attempt to explain its non-use of its mark in the United States
`
`in all the years (2016, 2017, 2018, 2019) prior to Covid. Nor does Dishoom provide any
`
`documentation to establish that it had a bona fide intent to use the mark in U.S. commerce at the
`
`time it filed its U.S. application.
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`Instead, Dishoom’s own Annual Reports for the years 2015 through 2020, reveal no
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`plans to expand to the United States to operate any hotels, restaurants, etc. as claimed in their
`
`trademark application. Indeed, Dishoom’s Annual Reports: (1) make no mention of any U.S.
`
`business or plans to begin business in the U.S. (2) state that its business during those years was
`
`limited to the operation of restaurants solely in the United Kingdom; and (3) show that the only
`
`plans for expansion they had from 2015 to 2020 was for potentially more restaurants in the
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`United Kingdom. 24 TTABVUE p.10 ¶¶ 58-59. Ex.1 p. 14; Ex.2 p. 14; Ex.3 p. 16, 20; Ex.4
`
`p.16, 20; Ex. 5 p. 17; Exhibit 6 p. 9, 24.
`
`“The absence of any documentary evidence on the part of an applicant regarding such
`
`intent constitutes objective proof… that the applicant lacks a bona fide intention to use its mark
`
`in commerce.” Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1930 (TTAB 2009)
`
`(citing Commodore Elecs. Ltd. v. CBM K. K., 26 USPQ2d 1503, 1507 (TTAB 1993)). An
`
`applicant may of course attempt to “elect to try to rebut the opposer[’s] prima facie case by
`
`offering additional evidence concerning the factual circumstances bearing upon his intent to use
`
`his mark in commerce.” Commodore Elecs., 26 USPQ2d at 1507 n.11. However, Applicant’s
`
`“mere statement of subjective intention, without more, would be insufficient to establish
`
`
`
`11
`
`

`

`applicant’s bona fide intention to use the mark in commerce.” Lane Ltd. v. Jackson Int’l Trading
`
`Co., 33 USPQ2d 1351, 1355 (TTAB 1994).
`
`Whether an applicant has a bona fide intent to use a mark in commerce is an objective
`
`inquiry based on the totality of the circumstances; and those circumstances must indicate the
`
`applicant’s intent to use the mark that are “firm” and “demonstrable.” M.Z. Berger, 114 USPQ2d
`
`at 1898.
`
`The only evidence Dishoom offers to in an attempt to support their intent to use the mark
`
`in the United States consists of: (1) mere “investigation into the viability” and “feasibility” of a
`
`“possible” expansion into the United States, which they did years after they filed their
`
`application, but upon which no action was ever taken (22 TTABVUE ¶ 18-19); and (2) the
`
`existence of a Dishoom cookbook purportedly currently being sold in the United States. Neither
`
`of these constitute evidence a firm and demonstrable intent to use the mark for the listed
`
`services, at the time it filed its application. Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d
`
`2001, 2008-09 (TTAB 2015) (concluding that while the applicant had provided documentary
`
`evidence of attending a trade show, it was insufficient to establish its intent at the time it filed its
`
`application); accord L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1443 (TTAB 2012)
`
`(“Applicant’s very generalized and non-specific reference to licensing and outsourcing as
`
`potential strategies to bring the product to the market at an unspecified time in the future
`
`(accompanied by printouts of third-party websites of aloe vera suppliers) is, to say the least,
`
`woefully deficient in showing a bona fide intent to use the mark.”). A&H Sportswear Co. v.
`
`William W. Yedor, 2019 USPQ2d 111513, at *6 (TTAB 2019) (lack of a bona fide intent to use
`
`found where only document not sufficiently contemporaneous with filing of application); Swiss
`
`Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2008-09 (TTAB 2015) (lack of bona fide intent
`
`
`
`12
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`

`

`to use found where no documentary evidence predated application filing date); Spirits
`
`International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99
`
`USPQ2d 1545, 1548-49 (TTAB 2011) (lack of a bona fide intent to use found where there was
`
`no documentary evidence, and evidence to explain lack of documentary evidence); SmithKline
`
`Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1304-05 (TTAB 2010) (lack of
`
`a bona fide intent to use; no documentary evidence; record devoid of any other evidence of
`
`intended use); Honda Motor Co. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009)
`
`(foreign registrations and internet printouts did not demonstrate an intent to use in the United
`
`States); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008)
`
`(lack of bona fide intent to use); Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d
`
`1351, 1352 (TTAB 1994); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d
`
`1503, 1504 (TTAB 1993).
`
`As noted, “feasibility” investigation was done many years after Dishoom’s application
`
`was filed, and thus does not evidence a bona fide intent at the time the application was filed.
`
`Moreover, nothing ever came from this preliminary feasibility investigation and we remain,
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`more than six years after Dishoom’s application was filed without: (1) any actual use of the
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`Dishoom mark in conjunction with any hotels, restaurants, bars, or any of the other myriad of
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`uses alleged to be intended at the time the application was filed; and (2) any evidence of any
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`“firm” and “demonstrable” intent to use at the time the application was filed.
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`Turning to the cookbook, it is noted that: (1) it was similarly not published until years
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`after the application was filed and thus does not demonstrate any intent to use the mark in
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`United States’s commerce at the time of the application; (2) it was published by Bloomsbury
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`Publishing (rather than Dishoom) and thus does not demonstrate use of the mark in U.S.
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`commerce by Dishoom; (3) “cookbooks” were one of the few items not included in the long
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`laundry list of proposed intended uses of the mark listed in the application, and thus the
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`existence of the cookbook does nothing to demonstrate an intent by Dishoom to use the mark in
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`commerce for the uses actually listed in its application. Consistent with the fact that its own
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`Annual Reports showing that its only planned expansion, was in the United Kingdom, Dishoom
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`has offers no countervailing evidence of (with regard to the U.S.) any leases, licenses, permits,
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`Employment Identification Numbers, safety certifications, employees, food supplier contracts or
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`invoices, beverage supplier contracts or invoices, construction contractor fees, equipment
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`invoices, furniture invoices, liquor licenses or applications, design or decorator contracts or
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`plans, layouts, decoration invoices, government licensing or permit applications, or any other
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`items that would be bountiful where someone is intending on opening a hotel, restaurant, or
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`tavern.
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`It is well settled that a long gap between the filing of an application and the activities
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`asserted to demonstrate bona fide intent tends to undercut an inference that the applicant actually
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`had a bona fide intent to use the mark. For example, the Board in Boston Red Sox Baseball Club
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`LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008), discounted evidence of Internet searches and
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`investigations conducted more than two years after the application filing date because they “were
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`not even remotely contemporaneous with the filing of the application.” Id. at 1587-88; see also
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`Swiss Grill, 115 USPQ2d at 2009 (applicant’s vague claims about communications, meetings, or
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`events which took place one or two years after the filing date, and which did not relate to the
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`mark in question, were found insufficient to show bona fide intent at the time of filing).
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`Accord, Société des Produits Nestlé S.A. v. Cándido Viñuales Taboada, 2020 USPQ2d 10893
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`(TTAB 2020): “After-the-fact activities that do not relate back to Applicant’s intent at the time
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`of filing are irrelevant.” The extremely vague and limited activities Dishoom points to (the
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`“feasibility” investigation and trip to the United States in 2020 and the cookbook published in
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`2019) are remote in time, having occurred years after the application and insufficient to
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`demonstrate a bona fide intent at the time of filing.
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`Dishoom’s own contemporaneous business records reference no plan to expand to the
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`United State at the time of the application. Moreover, they also consistently show no actual
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`engagement in United States commerce in the years following. Moreover, Dishoom has itself
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`admitted that even years after its application was filed it was still merely considering the
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`potential “feasibility” of “possible expansion” and “potential” locations. (22 TTABVUE ¶ 18-
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`19). This, in conjunction with Dishoom’s failure to present any contrary evidence of a
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`contemporaneous “intent” to use the mark in U.S. commerce at the time the application was
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`filed, would in and of themselves be sufficient to evidence a lack of bona fide intent to use the
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`mark at the time of Dishoom’s application. However, here there is more as, other facts (e.g.
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`Dishoom’s own Annual Reports) and circumstances (as noted in the following three paragraphs)
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`also consistently indicate that Dishoom had no bona fide intent to use the mark in United States
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`commerce at the time the application was filed, and that Dishoom was simply attempting to
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`reserve rights to the mark for potential use in commerce at some undefined time in the future.
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`(See, e.g. Société des Produits Nestlé S.A. v. Cándido Viñuales Taboada, 2020 USPQ2d 10893
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`(TTAB 2020) finding no bona fide intent to use where the record as a whole demonstrated an
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`absence of documentary support for a bonafide intent to use the mark “in commerce before, at
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`the time of, and for considerable time after” the filing of a trademark application where the
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`“Applicant’s activites were not sufficiently contemporaneous with the filing of his application,
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`and also not extensive or focused enough to convince us of Applicant’s actual bona fide intent…
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`when his application was filed” and that applicant only sought to “reserve rights” for “potential
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`use in commerce at some undefined time in the future”; accord M.Z. Berger, 114 USPQ2d at
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`1893 affirming board’s conclusion that the applicant “merely intended to reserve a right in the
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`mark and thus lacked the requisite intent.”).
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`The legislative history to the Trademark Law Revision Act of 1988 (“TLRA”), which
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`instituted applications based upon a bona fide intent to use the mark in commerce under
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`Trademark Act Section 1(b), mentions numerous circumstances that would weigh against a
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`finding of a bona fide intention to use a mark in commerce, among them:
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`[T]he applicant … filed [an] … intent-to-use application[] to register the … mark
`for many more new products than are contemplated, [or] an excessive number of
`… products [than] the applicant is likely to introduce under the applied-for
`mark[] during the pendency of the application[] …. Other circumstances may
`also indicate the absence of genuine bona fide intent to actually use the mark.
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`S. Rep. No. 100-515, 100th Cong. 2d Sess. at 23-24 (1988) (quoted in Lane, 33 USPQ2d at
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`1355-56). This legislative history is instructive, because the bona fide intent language for a
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`declaration supporting a trademark application, whether filed pursuant to Trademark Act Section
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`1(b) or 66(a), is very similar. Compare 15 U.S.C. § 1051(b)(3) with 15 U.S.C. §§ 1141(5) and
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`1141f(a).
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`Here, Dishoom filed an intent to use application to use the mark for all of the following:
`“Services for providing food and drink; take-out restaurant
`services, namely, food and drink takeaway services; self-service
`restaurants; snack bars; bar services, namely, public house
`services, micro pub services, cocktail bar services, wine bar
`services, and bar services; restaurant services; canteen services;
`cafeteria services; catering; catering services, namely, the catering
`of banquets; banqueting services, namely, providing banquet and
`social function facilities for special occasions; provision of
`conference and meeting facilities; provision of banquet and social
`function facilities for special occasions, namely, weddings;
`providing facilities for events, namely, exhibitions; arranging
`temporary housing accommodations; making reservations and
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`bookings for meals in taverns in the nature of public houses, and
`for meals at restaurants and hotels; hotel services; tavern services,
`namely, public house services; provision of conference and
`meeting venues; provision of banquet and social function venues
`for special occasions, namely, weddings; providing venues for
`events, namely, exhibitions”
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`Registering for such an excessive number of products and services, certainly weighs
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`against a finding of a bona fide intention, to use the mark in commerce for all the identified
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`goods, especially when considered in conjunction with there being no actual use of the mark in
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`the U.S. for any of the listed uses for more than a half a decade after the application was filed
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`and no documentary evidence showing an intent to use at the time of the application . Here,
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`Dishoom has deluged the Board with hundreds of pages of materials showing the use of the
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`mark either (1) in the United Kingdom; or (2) for purposes other than as listed it is application
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`(e.g. a cookbook), but none show any use of the mark in the United States for any of the myriad
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`of uses actually listed in its application (e.g. hotels, restaurants, bars, wedding venues, etc.).
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`In conclusion, the record as a whole demonstrates the absence of any documentary support
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`for Dishoom’s claim of a bona fide intent to use the Dishoom mark in commerce before, at the
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`time of, and for a considerable time after the filing of its Trademark Act Section 66(a)
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`application. Instead, the record demonstrates that Dishoom simply filed an application in an
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`attempt to reserve rights in the mark for a wide range of possible f