Kelly Services, Inc., et al v. Creative Harbor, LLC

Filing

OPINION and JUDGMENT filed : The judgment of the district court is AFFIRMED IN PART and VACATED IN PART, and the case is REMANDED for further proceedings consistent with the opinion and instructions of this court. Decision for publication. Damon J. Keith, Alice M. Batchelder (CONCURRING IN PART, DISSENTING IN PART, and DISSENTING FROM THE JUDGMENT), Circuit Judge and Eric L. Clay (AUTHORING), Circuit Judges.

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RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit I.O.P. 32.1(b)
File Name: 17a0016p.06

UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT

┐
KELLY SERVICES, INC.; KELLY PROPERTIES, LLC,
Plaintiffs-Appellees, │
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>

v.
CREATIVE HARBOR, LLC,
Defendant-Appellant.

No. 16-1200

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┘

Appeal from the United States District Court
for the Eastern District of Michigan at Detroit.
No. 2:14-cv-11249—Matthew F. Leitman, District Judge.
Argued: October 19, 2016
Decided and Filed: January 23, 2017
Before:

KEITH, BATCHELDER, and CLAY, Circuit Judges.
_________________
COUNSEL

ARGUED: Peter D. Gordon, PETER D. GORDON AND ASSOCIATES, Los Angeles,
California, for Appellant. David P. Utykanski, HARNESS, DICKEY & PIERCE, P.L.C., Troy,
Michigan, for Appellees. ON BRIEF: Peter D. Gordon, PETER D. GORDON AND
ASSOCIATES, Los Angeles, California, for Appellant. David P. Utykanski, Brent G. Seitz,
HARNESS, DICKEY & PIERCE, P.L.C., Troy, Michigan, for Appellees.
CLAY, J., delivered the opinion of the court in which KEITH, J., joined, and
BATCHELDER, J., joined in part of the majority opinion. BATCHELDER, J. (pp. 27–30),
delivered a separate opinion dissenting from part of the majority opinion and from the judgment.

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_________________
OPINION
_________________
CLAY, Circuit Judge. Defendant Creative Harbor, LLC (“Creative Harbor”) appeals the
judgment entered by the district court on February 1, 2016, voiding Creative Harbor’s trademark
applications numbered 86198230 and 86198309, respectively. Creative Harbor challenges the
district court’s determinations that: (1) Creative Harbor lacked a bona fide intention to use its
requested mark in commerce with respect to some of the goods and services identified in its
trademark applications, in violation of § 1(b) of the Lanham Act, 15 U.S.C. § 1051(b); and (2) if
Creative Harbor lacked such intent with respect to any of the goods and services, the applications
must be voided in their entirety. We have jurisdiction over this appeal pursuant to 28 U.S.C.
§ 1291. For the reasons set forth below, we AFFIRM IN PART and VACATE IN PART the
district court’s judgment. We REMAND for further proceedings consistent with this opinion.
BACKGROUND
I.

Factual History
We present the facts in the light most favorable to Creative Harbor, against whom the

district court entered summary judgment. See, e.g., Green v. Brennan, __ U.S. __, 136 S. Ct.
1769, 1774 (2016).
Defendant Creative Harbor is a California-based technology startup purportedly
“engaged in the business of original content creation and concept development for all media,
including but not limited to, internet, mobile, photography, film, and TV.” (R. 11, Answer,
PageID #121.) Creative Harbor was founded in 2014 by Christian Jurgensen (“Jurgensen”), who
serves as Creative Harbor’s owner, sole manager, and CEO.
Plaintiff Kelly Services, Inc. is a Michigan-based company that is allegedly “one of the
world’s largest providers of personnel and managed business services – staffing 99% of Fortune
100 companies and 90% of Fortune 500 companies.” (R. 1, Complaint, PageID #4.) Plaintiff
Kelly Properties, LLC, is an affiliated entity of Kelly Services, Inc. Because Plaintiffs do not

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assert separate claims or arguments, and have identical interests for the purposes of this appeal,
we refer to them collectively as “Kelly Services.”
In essence, the parties dispute which of them should have priority to the trademark
WORKWIRE (“the Mark”), which both wish to use in connection with their competing
employment-based software applications. In September 2013, Jurgensen allegedly developed an
idea for a mobile application designed to connect employers with prospective employees.
Jurgensen decided to call the application “WorkWire,” and formed Creative Harbor in February
2014 to develop the WorkWire application. In early 2014, Creative Harbor hired an intellectual
property attorney to explore obtaining the WORKWIRE trademark. That attorney allegedly
advised Creative Harbor that the Mark was available.
However, in early 2013, Kelly Services allegedly began developing its own employmentbased iPad application, which it intended to distribute through the Apple App Store. Kelly
Services also decided to name its application “WorkWire.” Kelly Services allegedly completed
this iPad application on February 4, 2014, and submitted the application to Apple for its approval
and eventual distribution. On February 17, 2014, Apple approved Kelly Services’ application,
but did not release it on the App Store immediately.
On February 19, 2014, Creative Harbor filed two trademark applications seeking rights to
the Mark with the United States Patent and Trademark Office at 6:28 p.m. and 7:56 p.m. Eastern
Standard Time, respectively (“the Applications”). The Applications sought the right to use the
Mark in connection with thirty-six individually identified goods and services. Creative Harbor
affirmed under penalty of perjury that it possessed a bona fide intention to use the Mark in
commerce on or in connection with each of the goods and services listed in the Applications. On
the same day, at approximately 8:11 p.m. Eastern Standard Time, Kelly Services’ iPad
application became available on the Apple App Store. A customer first downloaded the Kelly
Services application on February 20, 2014.
On March 10, 2014, Creative Harbor sent Kelly Services a cease and desist letter
asserting its right to use the Mark, and demanding that Kelly Services cease using the
WORKWIRE name in connection with Kelly Services’ Apple App Store iPad application.

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Sixteen days later, Kelly Services responded to that letter by bringing suit against Creative
Harbor in the United States District Court for the Eastern District of Michigan. In its complaint,
Kelly Services sought a declaratory judgment, inter alia, that: (1) it possessed superior rights to
the Mark; (2) it had not infringed on Creative Harbor’s rights to the Mark; and (3) Creative
Harbor’s rights to the Mark were invalid.
On May 2, 2014, Creative Harbor answered the complaint and filed counterclaims against
Kelly Services. Relevant to this appeal, Creative Harbor sought a declaratory judgment that it
had priority rights to the Mark over Kelly Services because it filed the Applications before Kelly
Services began using the Mark in commerce.
In roughly mid-August 2014, when the Patent and Trademark Office published the
Applications for opposition, Kelly Services promptly opposed the applications, notified the
Trademark Trial and Appeal Board (“TTAB”) of the pending action before the district court, and
moved to stay the TTAB proceedings pending resolution of the instant suit.

The TTAB

consolidated the oppositions and stayed the proceedings.
II.

Procedural History
Kelly Services sought discovery related to various issues in the case, including Creative

Harbor’s intent to use the Mark in commerce with respect to each of the goods and services
listed in the Applications. In response to Kelly Services’ document requests, Creative Harbor
produced a PowerPoint presentation that included mock-up “wireframes” (a concept map
outlining the elements of a software application) for a potential iPhone application.
Kelly Services also deposed Jurgensen as Creative Harbor’s representative pursuant to
Federal Rule of Civil Procedure 30(b)(6). During the deposition, Kelly Services asked Jurgensen
a number of questions related to Creative Harbor’s plans to use the Mark in connection with the
thirty-six goods and services identified in the Applications. In response to these questions,
Jurgensen testified that Creative Harbor’s outside attorney, David Sharifi, prepared the
Applications under Jurgensen’s instructions to “protect the mark” as to different products and
services for which the Mark “could” eventually be used “in case the brand got bigger.” (R. 56-1,
Jurgensen Dep. Vol I, PageID #1477–78.) Accordingly, Jurgensen testified that he was not

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personally aware of the particular reasons why Sharifi included particular goods and services in
the Applications.

Jurgensen elaborated that “some of these services might be of future

importance. Some of these terms might protect my endeavors in the future that I have . . . with
the brand . . . . We can go through every single [item], but I can also say to some of them this
would have been a future use.” (Id.)
Additionally, Jurgensen made several statements concerning the goods and services
identified in the Applications. The court below summarized those statements as follows:


Mr. Jurgensen said that the services and goods listed on the [Applications]
‘were defined with the idea of protecting my present and future
exploration of this name—of this brand.’ (Id. PageID #1486);



Mr. Jurgensen conceded that at the time his attorney drafted the
[Applications] he (Jurgensen) ‘had clear ideas for some of them, and some
of them were meant for future exploration.’ (Id. PageID #1481);



Mr. Jurgensen acknowledged that some of the listed ‘services might be of
future importance’ and that they ‘might protect my endeavors in the future
that I have . . . .’ (Id. PageID # 1477);



In the [Applications], Creative Harbor stated that it intended to use the
Mark with ‘computer game software,’ but Mr. Jurgensen testified that
Creative Harbor did ‘not’ intend to use the Mark ‘with a game.’ (R. 56-2,
Jurgensen Dep. Vol. II, PageID #1507);



In the [Applications], Creative Harbor said that it intended to use the Mark
in connection with ‘professional credentialing verification services . . . on
behalf of others,’ but Mr. Jurgensen acknowledged that he simply ‘wanted
to keep the option open to at some point do that.’ (Id. PageID #1508-09);



In the [Applications], Creative Harbor said that it intended to use the Mark
in connection with ‘employee relations information services,’ but when
asked about that listing, Mr. Jurgensen did not know what it ‘refers to.’
(Id. PageID #1512);



In the [Applications], Creative Harbor said that it intended to use the Mark
in connection with ‘employment staffing consultation services,’ and Mr.
Jurgensen explained that Creative Harbor included this service because
‘maybe at some point [the WorkWire application] would have consulting
in there, maybe some kind of career advisor, something like this.’ (Id.);

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In the [Applications], Creative Harbor said that it intended to use the Mark
in connection with ‘business consulting’ services, but Mr. Jurgensen
conceded that he ‘wanted to make sure [that] was there included [sic]’
because the company ‘could’ perhaps perform those services ‘at some
point’ in the future. (Id. PageID #1509.)

Kelly Servs., Inc. v. Creative Harbor, LLC, 140 F. Supp. 3d 611, 617–18 (E.D. Mich. 2015)
(Kelly Servs. II) (emphasis in original) (record citations altered).
On May 14, 2015, Creative Harbor moved for partial summary judgment seeking a
declaration that it had priority to the Mark based on the Applications. Kelly Services opposed
Creative Harbor’s motion on the ground that the Applications were invalid because Creative
Harbor lacked bona fide intent to use the Mark on some of the goods and services listed in the
Applications, as required by § 1(b) of the Lanham Act. The district court construed Kelly
Services’ opposition as a cross-motion for summary judgment on the priority issue.
On August 21, 2015, the district court denied Creative Harbor’s summary judgment
motion. Kelly Servs., Inc. v. Creative Harbor, LLC, 124 F. Supp. 3d 768, 777–78 (E.D. Mich.
2015). The district court determined that the Applications themselves did not establish Creative
Harbor’s priority to the Mark; rather, the district court concluded, Creative Harbor needed to
complete its registration by using the Mark in commerce before its priority rights would vest. Id.
The district court thus acknowledged that “while Creative Harbor may establish its priority at
some point in the future, it is not now entitled to the declaration that it seeks here.” Id. at 778.
Because the district court reasoned that Creative Harbor’s remaining claims were dependent on
the success of Creative Harbor’s priority claim, the district court dismissed the balance of
Creative Harbor’s counter-claims. Id.
The district court delayed ruling on Kelly Services’ cross-motion. Instead, the district
court ordered supplemental briefing as to whether it “should (1) decide the validity of the
[Applications] or (2) leave that issue to the TTAB and stay this action pending the TTAB’s
action on Kelly [Services’] Notices of Opposition.” Id. at 779. Thereafter, the parties conferred
and stipulated that the district court should determine the Applications’ validity. The parties then
filed supplemental briefing.

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On October 16, 2015, the district court granted Kelly Services’ cross-motion for
summary judgment, voiding the Applications in their entirety. Kelly Servs. II, 140 F. Supp. 3d at
623. The district court concluded that there was no genuine issue of material fact that Creative
Harbor lacked a bona fide intent to use the Mark as to some of the goods and services listed in its
Applications. Id. at 618–19. After surveying TTAB precedent, the district court concluded that
Creative Harbor’s lack of bona fide intent as to some of the goods and services necessitated
voiding the Applications in their entirety. Id. at 622.
Having won priority as to the Mark, Kelly Services voluntarily dismissed its remaining
claims without prejudice. The district court thereafter entered a final judgment declaring, inter
alia, that: (1) “Creative Harbor’s trademark applications nos. 86198230 and 86198309 are
invalid and void;” (2) “Kelly [Services] possesses priority to the trademark WORKWIRE that is
superior to Creative Harbor;” and (3) “Creative Harbor has no valid or enforceable rights to the
trademark WORKWIRE as against Kelly” Services. Kelly Servs., Inc. v. Creative Harbor, LLC,
No. 14-cv-11249, 2016 WL 374102, at *1-3 (E.D. Mich. Feb. 1, 2016). On February 17, 2016,
Creative Harbor filed a timely notice of appeal.
DISCUSSION
On appeal, Creative Harbor argues that: (1) the district court erred in concluding that it
lacked a bona fide intent to use the Mark in commerce with respect to some of the goods and
services listed in the Applications at the time the Applications were filed; and (2) even if
Creative Harbor did lack bona fide intent as to certain goods and services, the Applications
should not have been voided in their entirety. We address each of these arguments in turn.
I.

Bona Fide Intent
A.

Standard of Review

We review de novo the district court’s partial grant of summary judgment. See, e.g.,
Coach, Inc. v. Goodfellow, 717 F.3d 498, 502 (6th Cir. 2013). A movant is entitled to “summary
judgment if the movant shows that there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). A reviewing court

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may affirm a grant of summary judgment if the record, when viewed in the light most favorable
to the non-movant, contains no genuine issues of material fact. See, e.g., AutoZone, Inc. v.
Tandy Corp., 373 F.3d 786, 792 (6th Cir. 2004). “[T]he mere existence of some alleged factual
dispute between the parties will not defeat an otherwise properly supported motion for summary
judgment; the requirement is that there be no genuine issue of material fact.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 247–48 (1986) (emphasis in original).
B.

Applicable Legal Principles

Section 1 of the Lanham Act creates two procedural mechanisms through which
individuals or businesses can apply to register a trademark. First, under § 1(a), trademark
owners can apply for protection of marks already being “used in commerce.”

15 U.S.C.

§ 1051(a)(1); see generally Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir.
2009).
Second, under § 1(b), a “person who has a bona fide intention, under circumstances
showing the good faith of such person, to use a trademark in commerce may request registration
of its trademark” by providing certain information and fees in an application to the Patent and
Trademark Office. 15 U.S.C. § 1051(b)(1) (emphasis added). As the Federal Circuit has
explained, while intent-to-use (“ITU”) applicants “can begin the registration process having only
a sincere intent” to later use the mark in commerce, “the [Lanham Act] also requires that
applicants filing such intent-to-use applications must in due course either (i) file a verified
statement of actual use of the mark, or (ii) convert the application into a use application.” M.Z.
Berger & Co., Inc. v. Swatch AG, 787 F.3d 1368, 1375 (Fed. Cir. 2015) (citing 15 U.S.C.
§ 1051(b)(3), (c), (d)); see also Allard Enters., Inc. v. Advanced Programming Res., Inc.,
146 F.3d 350, 356–57 (6th Cir. 1998) (describing the ITU application process under § 1(b)).
Two of our sister Circuits and the TTAB have held that “lack of a bona fide intent is
proper statutory grounds on which to challenge a trademark application.” M.Z. Berger, 787 F.3d
at 1375; Aktieselskabet AF 21. Nov. 2001 v. Fame Jeans Inc., 525 F.3d 8, 21 (D.C. Cir. 2008);

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L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434, 2012 WL 1267956, at *11 (T.T.A.B. 2012).1 The
parties do not contest that premise. More importantly, § 1(b) explicitly requires that an ITU
applicant have a bona fide intent to use the mark in commerce as to the goods and services listed
in the application. 15 U.S.C. § 1051(b)(1). We therefore join the Federal and D.C. Circuits and
hold that a lack of bona fide intent is a proper ground on which to oppose an ITU application.
M.Z. Berger, 787 F.3d at 1375; Aktieselskabet, 525 F.3d at 21 (“A bona fide intent is a statutory
requirement of a valid trademark application under § 1(b), and the lack of such intent is therefore
a ground on which Bestseller may oppose Fame’s application.”).
Although the Lanham Act does not define what constitutes a bona fide intent to later use
a mark in commerce, the Federal Circuit has explained “that the applicant’s intent must be
demonstrable and more than a mere subjective belief.” M.Z. Berger, 787 F.3d at 1375; see also
Lane Ltd. v. Jackson Int’l Trading Co., 33 U.S.P.Q.2d 1351, 1994 WL 740491, at *6 (T.T.A.B.
1994) (“Thus, the determination of whether an applicant has a bona fide intention to use the
mark in commerce is to be a fair, objective determination based on all the circumstances.”);
3 McCarthy on Trademarks § 19.14, at 19.48 (“Congress did not intend the issue to be resolved
simply by an officer of the applicant later testifying, ‘Yes, indeed, at the time we filed that
application, I did truly intend to use the mark at some time in the future.’”). Accordingly,
“whether an applicant had a ‘bona fide intent’ to use the mark in commerce at the time of the
application requires objective evidence of intent.” M.Z. Berger, 787 F.3d at 1376 (emphasis
added). “Although the evidentiary bar is not high, the circumstances must indicate that the
applicant’s intent to use the mark was firm and not merely intent to reserve a right in the mark.”
Id. (emphasis added). This determination must be made on a “case-by-case basis considering the
1

Although both parties extensively cite TTAB decisions in their briefing before us, and essentially treat
those decisions as controlling, neither party addresses the appropriate level of weight we should accord TTAB
precedent. It appears that our sister Circuits have generally treated TTAB decisions as persuasive authority “entitled
to respect” because of the TTAB’s “expertise in trademark disputes.” See, e.g., Rosenruist-Gestao E Servicios LDA
v. Virgin Enters. Ltd., 511 F.3d 437, 459–60 (4th Cir. 2007); Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373,
382 (2d Cir. 2005) (citing TTAB decisions); Enrique Bernat F., S.A. v. Guadalajara, Inc., 210 F.3d 439, 443 (5th
Cir. 2000) (same); Gruma Corp. v. Mex. Restaurants, Inc., 497 F. App’x 392, 396 n.1 (5th Cir. 2012) (collecting
cases treating TTAB decisions as persuasive authority). We note, however, that there may be a colorable argument
that TTAB decisions should be accorded Chevron deference, at least in some circumstances. See Eastman Kodak
Co. v. Bell & Howell Document Mgmt. Prods. Co., 994 F.2d 1569, 1571 (Fed. Cir. 1993) (giving Chevron deference
to the TTAB’s interpretation of the Lanham Act). For purposes of this appeal, we will assume, without deciding,
that TTAB decisions should be treated as persuasive, but not controlling, authority.

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totality of the circumstances,” and may be assessed as of the time the application was filed. Id.
“As a general rule, the factual question of intent is particularly unsuited to disposition on
summary judgment.” Honda Motor Co., Ltd. v. Winkelmann, 90 U.S.P.Q.2d 1660, 2009 WL
962810, at *2 (T.T.A.B. 2009); see also Smith v. Hudson, 600 F.2d 60, 66 (6th Cir. 1979)
(“[C]ases involving questions of motive or intent are normally not suited to disposition on
summary judgment.”).
“Neither the [Lanham Act] nor [its] legislative history indicates the specific quantum or
type of objective evidence required to meet the bar” to show bona fide intent. M.Z. Berger,
787 F.3d at 1376.

Drawing from the relevant legislative history, however, the TTAB has

provided “several specific examples of objective circumstances which, if proven, ‘may cast
doubt on the bona fide nature of the intent or even disprove it entirely.’” Lane, 1994 WL
740491, at *6 (quoting S. Rep. No. 100-515, at 23 (1988)).
For example, the applicant may have filed numerous intent-to-use applications to
register the same mark for many more new products than are contemplated,
numerous intent-to-use applications for a variety of desirable trademarks intended
to be used on [a] single new product, numerous intent-to-use applications to
register marks consisting of or incorporating descriptive terms relating to a
contemplated new product, numerous intent-to-use applications to replace
applications which have lapsed because no timely declaration of use has been
filed, an excessive number of intent-to-use applications to register marks which
ultimately were not actually used, an excessive number of intent-to-use
applications in relation to the number of products the applicant is likely to
introduce under the applied-for marks during the pendency of the applications, or
applications unreasonably lacking in specificity in describing the proposed goods.
Other circumstances may also indicate the absence of genuine bona fide intent to
actually use the mark.
Id. (quoting S. Rep. No. 100-515, at 23–24).
Further, one prominent practitioner has recently compiled a list of “affirmative activities
that have been deemed indicative of the presence of a bona fide intent to use,” including:


conducting a trademark availability search;



performing preparatory graphic design work or labeling on sales material
for a product;



using a mark in test marketing;

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

testimony regarding informal, unwritten business plans or market
research;



obtaining necessary regulatory permits;



obtaining a correlative domain name for the mark or setting up a website;



making contacts with individuals who might help develop a business;



correspondence mentioning the planned use of the mark;



attempts to find licensees, including ones outside of the U.S.; [and]



obtaining commercial space in which to perform the services.

See Sandra Edelman, Proving Your Bona Fides—Establishing Bona Fide Intent to Use Under the
U.S. Trademark (Lanham) Act, 99 Trademark Rptr. 763, 781–82 (2009) (footnotes omitted)
(emphasis in original).
On a motion for summary judgment in an action challenging an ITU application for lack
of bona fide intent, the party opposing the application (“opposing party” or “opposer”) “has the
initial burden of demonstrating by a preponderance of the evidence that [the] applicant lacked a
bona fide intent to use the mark on the identified goods.” Bos. Red Sox Baseball Club LP v.
Sherman, 88 U.S.P.Q.2d 1581, 2008 WL 4149008, at *6 (T.T.A.B. 2007); see also Intel Corp. v.
Emeny, 2007 WL 1520948, at *4 (T.T.A.B. May 15, 2007) (unpublished) (“If we determine that
opposer has established a prima facie case that applicant's application is invalid for lack of the
requisite bona fide intention to use its mark, the burden then shifts to applicant to come forward
with evidence to refute such a case.”). Once this showing is made, the applicant must either
come forward with objective documentary evidence demonstrating bona fide intent, or else
provide “other facts . . . which adequately explain or outweigh [the] applicant’s failure to provide
such documentary evidence.” Honda Motor Co., 2009 WL 962810, at *2. Without a valid
excuse, the “absence of any documentary evidence on the part of an applicant regarding [bona
fide intent] constitutes objective proof sufficient to prove that the applicant lack[ed] a bona fide
intention to use its mark in commerce.”

Bos. Red Sox, 2008 WL 4149008, at *6 (citing

Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha Opp’n, 26 U.S.P.Q.2d 1503, 1507 (T.T.A.B.
1993)).

“While the burden to produce evidence shifts, the burden of persuasion by a

preponderance of the evidence remains with the party asserting a lack of a bona fide intention to
use.” Intel Corp., 2007 WL 1520948, at *4.

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Analysis

Creative Harbor argues that the evidence in the record shows that it had a bona fide intent
to use the Mark in connection with each and every one of the thirty-six goods and services listed
in the Applications at the time they were filed. We disagree.
1. Prime Facie Showing of Lack of Bona Fide Intent
As the party challenging Creative Harbor’s Applications, Kelly Services bore “the initial
burden of demonstrating by a preponderance of the evidence that [Creative Harbor] lacked a
bona fide intent to use the mark on the identified goods.” Bos. Red Sox, 2008 WL 4149008, at
*6. We hold that Kelly Services met this initial burden.
As the district court correctly found, Jurgensen’s deposition testimony on behalf of
Creative Harbor was sufficient to demonstrate by a preponderance of the evidence that Creative
Harbor lacked bona fide intent to use the Mark as to at least some of the goods and services
identified in the Applications at the time the Applications were filed. The district court and
Kelly Services specifically reference the following portions of Jurgensen’s deposition:


Mr. Jurgensen testified that he asked his attorney to file the [Applications]
in order ‘to protect this brand . . . in case the brand got bigger; in case it
diversifies a little bit.’ (R. 56-1, PageID #1478);



Mr. Jurgensen said that the services and goods listed on the [Applications]
‘were defined with the idea of protecting my present and future
exploration of this name—of this brand.’ (Id. PageID #1486);



Mr. Jurgensen conceded that at the time his attorney drafted the
[Application] he (Jurgensen) ‘had clear ideas for some of them, and some
of them were meant for future exploration.’ (Id. PageID #1481);



Mr. Jurgensen acknowledged that some of the listed ‘services might be of
future importance’ and that they ‘might protect my endeavors in the future
that I have . . . .’ (Id. PageID # 1477);



In the [Applications], Creative Harbor stated that it intended to use the
Mark with ‘computer game software,’ but Mr. Jurgensen testified that
Creative Harbor did ‘not’ intend to use the Mark ‘with a game.’ (R. 56-2,
PageID #1507);



In the [Applications], Creative Harbor said that it intended to use the Mark
in connection with ‘professional credentialing verification services . . . on

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behalf of others,’ but Mr. Jurgensen acknowledged that he simply ‘wanted
to keep the option open to at some point do that.’ (Id. PageID #1508–09);


In the [Applications], Creative Harbor said that it intended to use the Mark
in connection with ‘employee relations information services,’ but when
asked about that listing, Mr. Jurgensen did not know what it ‘refers to.’
(Id. PageID #1512);



In the [Applications], Creative Harbor said that it intended to use the Mark
in connection with ‘employment staffing consultation services,’ and Mr.
Jurgensen explained that Creative Harbor included this service because
‘maybe at some point [the WorkWire application] would have consulting
in there, maybe some kind of career advisor, something like this.’ (Id.);



In the [Applications], Creative Harbor said that it intended to use the Mark
in connection with ‘business consulting’ services, but Mr. Jurgensen
conceded that he ‘wanted to make sure [that] was there included’ because
the company ‘could’ perhaps perform those services ‘at some point’ in the
future. (Id. PageID #1509.)

Kelly Servs. II, 140 F. Supp. 3d at 617–18 (emphasis in original) (record citations altered).
These excerpts establish that Creative Harbor did not have a “firm” intention to use the
Mark in connection with computer software games, professional credentialing verification
services, employee relations information services, employment staffing consultation services,
and business consulting services—all goods and services listed in the Applications. See M.Z.
Berger, 787 F.3d at 1376. Moreover, several of Jurgensen’s other statements strongly suggest
that Creative Harbor included some goods and services in the Applications merely to “reserve a
right in the mark” in case it ever decided to expand its commercial activities into those areas. Id.
Jurgensen’s statement that, at the time the Applications were filed, Creative Harbor “had clear
ideas for some of [the goods and services], and some of them were meant for future exploration”
is particularly indicative of Creative Harbor’s lack of firm intent. Creative Harbor was not
permitted to claim the Mark for uses that might only materialize after some unspecified “future
exploration”—it was required to have firm plans to use the Mark at the time the Applications
were filed. M.Z. Berger, 787 F.3d at 1376. Taking all of Jurgensen’s statements together, we are
persuaded that the district court was correct in concluding that Kelly Services carried its initial
burden in showing that it was more likely than not that Creative Harbor lacked bona fide intent
as to some of the goods and services listed in the Applications. See Bos. Red Sox, 2008 WL

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4149008, at *6 (holding that opposing party carried its initial burden to undermine bona fide
intent where the applicant claimed the mark for a wide array of products, and produced no
discovery evidence that it had a genuine commercial capacity to produce all of those products).
Creative Harbor challenges the district court’s conclusion that Kelly Services carried its
initial burden of production by arguing that the district court was not entitled to consider
Jurgensen’s deposition testimony. Creative Harbor appears to argue that Jurgensen’s deposition
testimony was inadmissible hearsay, and that the district court erred in considering the testimony
as an admission against interest.
However, Creative Harbor failed to raise its evidentiary challenge to the consideration of
Jurgensen’s deposition testimony in its briefing before the district court; it has thus waived the
right to make that argument on appeal. See, e.g., Bailey v. Floyd Cty. Bd. of Educ., 106 F.3d
135, 143 (6th Cir. 1997) (“It is well-settled that this court will not consider arguments raised for
the first time on appeal unless our failure to consider the issue will result in a plain miscarriage
of justice.”). In any event, the argument is without merit. Jurgensen is Creative Harbor’s
founder, owner, sole manager, and CEO—for all practical purposes, he is Creative Harbor.
Federal Rule of Civil Procedure 32(a)(3) allows an adverse party—like Kelly Services—to “use
for any purpose the deposition of a party or anyone who, when deposed, was the party’s officer,
director, managing agent, or designee under Rule 30(b)(6) or 31(a)(4).” (emphasis added).
As Creative Harbor’s CEO—and Rule 30(b)(6) deponent—Jurgensen’s testimony was binding
on Creative Harbor, and the district court did not err in considering it. See Charles A. Wright et
al., Federal Practice and Procedure § 2143 (3d ed. 2016) (explaining that “Rule 32(a) creates of
its own force an exception to the hearsay rule”); see also, e.g., Keepers, Inc. v. City of Milford,
807 F.3d 24, 34 (2d Cir. 2015) (explaining that an organization’s Rule 30(b)(6) depositions are
“‘binding’ in the sense that whatever its deponent says can be used against the organization”);
cf. Fed. R. Evid. 801(d)(2)(c) (declaring that a statement by a “party’s agent or servant
concerning a matter within the scope of the agency or employment, made during the existence of
the relationship” is “not hearsay”).

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Accordingly, we hold that Kelly Services met its initial burden of production to show that
Creative Harbor lacked bona fide intent as to some of the goods and services listed in the
Applications.
2. Rebuttal Evidence
Once Kelly Services met its initial burden of production, Creative Harbor was required to
come forward with either objective documentary evidence establishing its bona fide intent, or
facts supporting a sound explanation as to why such evidence was lacking. Honda Motor Co.,
2009 WL 962810, at *2. We hold that Creative Harbor provided sufficient objective evidence as
to some of the goods and services listed in the Applications, but not others.
In its summary judgment briefing, and again on appeal, Creative Harbor marshals
significant evidence demonstrating its bona fide intent. A representative sample of Creative
Harbor’s evidence includes:


Its hiring of a computer program development firm to develop an employmentbased software application for Apple’s “App Store.” (R. 48-33, App Developer
Agreement);



A trademark search it purportedly conducted to determine whether the
WORKWIRE name was available. (R. 58-3, Jurgensen Supp. Decl., ¶ 19);



The wireframes it developed for its proposed employment-based software
application. (Id. ¶¶ 10–13);



Its business plans for the proposed application. (R. 65-5, 5 Year Business Plan);



Its obtaining of the www.work-wire.com domain name. (R. 48-20, Domain
Registration); and



Its press release regarding its employment-based software application. (R. 48-22,
Press Release.)

The district court correctly acknowledged that Creative Harbor’s evidence “makes clear”
that Creative Harbor had a bona fide intent as to some of the goods and services listed in the
Applications. Kelly Servs. II, 140 F. Supp. 3d at 618. For example, the district court noted “that
Creative Harbor had a ‘firm’ intent to use the Mark in connection with an iPhone application that
connected job seekers with employers.” Id. We agree with the district court, however, that
Creative Harbor’s evidence ultimately “misses the mark.” Id.

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As the district court correctly noted, “evidence that Creative Harbor intended to use the
Mark with respect to some of the goods and services listed in the [Applications] does not
contradict Kelly [Services’] evidence that Creative Harbor lacked a firm intent to use the Mark
on several of the other services and goods listed in the [Applications.]” Id. (emphasis in
original). Creative Harbor, for example, failed to come forward with any objective evidence
showing a bona fide intent to use the Mark in connection with computer software games,
professional credentialing verification services, employee relations information services,
employment staffing consultation services, and business consulting services—the goods and
services most fatally undermined by Jurgensen’s deposition testimony. Nor did Creative Harbor
offer any reasons excusing its failure to come forward with such objective evidence. The
“absence of any documentary evidence on the part of an applicant regarding [bona fide] intent
constitutes objective proof sufficient to prove that the applicant lacks a bona fide intention to use
its mark in commerce.” Bos. Red Sox, 2008 WL 4149008, at *6; Spirits Int’l, B.V. v. S.S. Taris
Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 U.S.P.Q.2d 1545, 2011 WL 2909909,
at *3 (T.T.A.B. 2011) (same).
Accordingly, we hold that Creative Harbor lacked a bona fide intent to use the Mark in
connection with at least some of the goods and services listed in the Applications.
II.

Remedy
The parties disagree as to the appropriate remedy for when an ITU applicant has a bona

fide intent to use a mark in commerce on some, but not all, of the goods and services listed in her
application. Kelly Services argues, and the district court found, that the correct remedy is to void
the application in its entirety unless the applicant voluntarily deletes the challenged goods and
services before the dispute is substantially litigated. Creative Harbor, by contrast, argues that the
Applications should not be void, but rather the court should delete the offending goods and
services from the application and allow the remainder to proceed towards registration. We agree
with Creative Harbor that the district court erred in voiding the Applications in their entirety.

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A.

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Standard of Review

We review de novo the district court’s interpretation of another jurisdiction’s precedents,
see Salve Regina Coll. v. Russell, 499 U.S. 225, 231 (1991), as well as its interpretation of the
Lanham Act. Eagles, Ltd. v. Am. Eagle Found., 356 F.3d 724, 728 (6th Cir. 2004).
B.

Analysis

Both parties marshal TTAB precedent in favor of their preferred remedy. Creative
Harbor relies on three cases—Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 U.S.P.Q.2d
1696, 2006 WL 802407 (T.T.A.B. 2006), The Wet Seal, Inc. v. FD Management, Inc.,
82 U.S.P.Q.2d 1629, 2007 WL 458529 (T.T.A.B. 2007), and Syndicat Des Proprietaires
Viticulteurs de Chateauneuf-du-Pape v. Pasquier DesVignes, 107 U.S.P.Q.2d 1930, 2013 WL
5407284, at *1 (T.T.A.B. 2013)—in arguing that it should have the opportunity to cure its
overbroad Applications.
In Grand Canyon, unlike Creative Harbor in this case, the applicant submitted a usebased trademark application under § 1(a) of the Lanham Act. 2006 WL 802407, at *1. The
opposing party argued that because the applicant did not use the mark for all of the services
listed in the application, the application must be voided in its entirety. Id. at *1. In rejecting this
argument, the TTAB drew a distinction “between situations in which an applicant has committed
fraud, or has not used the mark on any of the goods or services identified in its application,” and
cases “in which the opposer claims only that [the] applicant did not use its mark in connection
with some of the services identified in its application as of the filing of the application.” Id. at
*3. While the harsh remedy of voiding the application was appropriate in the former two
situations, the TTAB held that it was “inappropriate” for the latter. Id.; see also id. at *1 (“[W]e
hold that as long as the mark was used on some of the identified goods and services as of the
filing of the application, the application is not void in its entirety.”). Rather, the TTAB held that
applicants that have used the mark in connection with some of the goods or services identified in
their applications, but not others, “may ‘cure’ this problem by amending” their applications to
delete the offending goods and services.

Id. at *3.

Accordingly, the TTAB granted the

applicant’s pending motion to amend its overbroad application. Id.

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The next year, in Wet Seal, the TTAB considered Grand Canyon’s holding in the context
of a § 1(b) ITU application. There, the opposing party challenged some of the uses claimed in
the applicant’s ITU application for lack of bona fide intent, and argued that the entire application
should be voided. 2007 WL 458529, at *2. The TTAB held that the opposing party’s evidence
failed to establish a lack of bona fide intent. Id. at *14. Earlier in the opinion, however, the
TTAB addressed the opposing party’s argument that the entire application should be void if
some of the claimed uses were found to lack bona fide intent. Citing Grand Canyon, the TTAB
observed that “contrary to opposer’s contention, an application will not be deemed void for lack
of a bona fide intention to use absent proof of fraud, or proof of a lack of bona fide intention to
use the mark on all of the goods identified in the application, not just some of them.” Id. at *2
(footnote omitted). “Thus,” the TTAB continued, “we will decide this issue in terms of whether
the items, if any, for which opposer has shown applicant’s lack of bona fide intention to use the
mark should be deleted from the application.” Id.
Finally, in Syndicat, the applicant conceded that it lacked bona fide intent as to certain
goods listed in its § 1(b) ITU application. 2013 WL 5407284, at *1. The TTAB accordingly
ordered those goods deleted from the application. Id. at *15. In so doing, the TTAB quoted Wet
Seal’s statement that “an application will not be deemed void for lack of a bona fide intention to
use absent proof of fraud, or proof of a lack of bona fide intention to use the mark on all of the
goods identified in the application, not just some of them.” Id. (quoting Wet Seal, 2007 WL
458529, at *2).
Notwithstanding this authority, Kelly Services argues, and the district court agreed, that
applicable rule was articulated in Spirits International, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi
Tarim Satis Kooperatifleri Birligi, 99 U.S.P.Q.2d 1545, 2011 WL 2909909 (T.T.A.B. 2011).
There, the opposing party challenged for lack of bona fide intent an application for a trademark
to be used in connection with both alcoholic and non-alcoholic beverages. Id. at *1. Although
the opposing party’s arguments focused on the “applicant’s lack of a bona fide intention to use
its mark for alcoholic beverages, the opposition was brought against all the goods” listed in the
application. Id. at *2 n.3. After the opposing party met its initial burden of production, the
“applicant submitted no evidence whatsoever, nor did it file a brief” in response. Id. at *4. The

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TTAB accordingly held that the applicant had “failed to rebut the opposer’s evidence,” and
voided the entire application. Id.
In a footnote, the TTAB stated that “to the extent that opposer is successful in proving . . .
lack of bona fide intention to use the mark with respect to any of the goods in each class,
specifically alcoholic beverages, the opposition against the classes in their entirety would be
sustained.” Id. at *2 n.3. The TTAB continued that “if [the] applicant believed that opposer's
objection to registration of the mark was limited to the alcoholic beverages listed in the
identification of each class[,] . . . [the] applicant could have moved to delete alcoholic beverages
from its identification if applicant did not have a bona fide intention to use its mark in commerce
with respect to such goods, but did with respect to the non-alcoholic beverages.” Id.
At bottom, the parties’ dispute is centered on which TTAB statement should direct the
remedy here: Spirits International’s statement that “to the extent that opposer is successful in
proving . . . lack of bona fide intention to use the mark with respect to any of the goods in each
class . . . the opposition against the classes in their entirety would be sustained,” 2011 WL
2909909, at *2 n.3, or Wet Seal and Syndicat’s statement that “an application will not be deemed
void for lack of a bona fide intention to use absent proof of fraud, or proof of a lack of bona fide
intention to use the mark on all of the goods identified in the application, not just some of them.”
Wet Seal, 2007 WL 458529, at *2. After a close review of the relevant precedents, we conclude
that Kelly Services and the district court misread Spirits International, and the more forgiving
rule articulated in Grand Canyon should be applied here.
The disputed text and footnote of Spirits International reads as follows:
With respect to the lack of bona fide intent to use ground, opposer asserts that
applicant has not produced any documents in response to opposer’s requests for
production of documents that might support applicant’s allegations of a bona fide
intention to use the mark MOSKINISI, nor has applicant provided any
information of such an intent in response to opposer’s interrogatories seeking
such information, and that on information and belief applicant does not and never
has had a bona fide intention to use the mark MOSKINISI in commerce in
connection with any alcoholic products.3

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__________________
3

Although the notice of opposition refers specifically to the likelihood of
confusion with respect to applicant’s use of the mark for alcoholic beverages, and
applicant’s lack of a bona fide intention to use its mark for alcoholic beverages,
the opposition was brought against all the goods in Classes 32 and 33. Therefore,
to the extent that opposer is successful in proving likelihood of confusion or lack
of a bona fide intention to use the mark with respect to any of the goods in each
class, and specifically alcoholic beverages, the opposition against the classes in
their entirety would be sustained. In this connection, if applicant believed that
opposer’s objection to registration of the mark was limited to the alcoholic
beverages listed in the identification of each class, it could have availed itself of
the divisional procedure, as it did when it requested that Classes 1, 2, 3, 29, 30, 39
and 40 be divided out from the application. Or, with respect to the lack of a bona
fide intent to use ground, applicant could have moved to delete alcoholic
beverages from its identification if applicant did not have a bona fide intention to
use its mark in commerce with respect to such goods, but did with respect to the
non-alcoholic beverages. Although all of the goods in Class 33 are alcoholic
beverages, applicant's identified goods in Class 32 include both alcoholic
beverages and non-alcoholic items. Opposer could then have determined whether
it wished to contest the division and/or proceed with the opposition in connection
with non-alcoholic beverages as well as alcoholic beverages, or whether a
registration could have issued for the non-alcoholic beverages in Class 32.
Compare, Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696
(TTAB 2006), in which an opposition was brought, inter alia, on the ground that
the applicant had not used its mark on all of the identified services as of the filing
date of the use-based application and the application was therefore void ab initio.
Prior to trial applicant filed a motion to amend its identification to delete certain
services for which the opposer claimed that applicant did not use the mark; the
Board granted applicant’s motion, and denied opposer’s motion for summary
judgment with respect to the services remaining in the application.
Spirits Int’l, 2011 WL 2909909, at *2 n.3 (emphasis added). The district court viewed the
italicized passages as holding that when an applicant lacks a bona fide intent to use some, but not
all of the goods and services listed in a § 1(b) ITU application, the entire application must be
voided unless the applicant voluntarily deletes the overbroad portions of the applications when
challenged. Kelly Servs. II, 140 F. Supp. 3d at 622.
In full context, however, the more accurate reading is that the TTAB explained: (1) the
consequences of the applicant’s failure to provide any rebuttal evidence in light of the TTAB’s
well-established summary judgment procedure for bona fide intent challenges to ITU

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applications; and (2) how the applicant could have avoided having the bona fide intent challenge
risk his trademark as applied to the non-alcohol beverages listed in the application.
Recall that the TTAB utilizes a two-step burden shifting framework: if the opposing party
makes a prima facie showing that the applicant lacked bona fide intent, the burden shifts to the
applicant to come forward with objective evidence showing bona fide intent, or a good reason
why such evidence is lacking. Sprits Int’l, 2011 WL 2909909, at *3–4 (citing Bos. Red Sox,
2008 WL 4149008, at *6, and Commodore Elecs., 26 U.S.P.Q.2d at 1507). The text immediately
preceding Footnote 3 notes that the applicant in Spirits International did not come forward with
any rebuttal evidence when the opposing party challenged its bona fide intent. Id. at *2.
Footnote 3 then explains the import of this omission. The challenge was brought against all
beverage classes contained in the application. Id. at *2 n.3. Because the applicant offered no
rebuttal evidence, under the TTAB’s burden shifting framework, if the opposing party was
“successful in proving . . . lack of a bona fide intention to use the mark with respect to any of the
goods in each class, and specifically alcoholic beverages”—in other words, if the opposing party
successfully put forward a prima facie showing of lack of bona fide intent—then “the opposition
against the classes in their entirety would be sustained” because the challenge applied to all
goods and services, and the applicant did not come forward with rebuttal evidence as to any of
the goods and services. Id.
The TTAB then explains how the applicant could have limited the scope of his exposure
to just the alcoholic beverages listed in his application, i.e., the goods the opposing party
specifically focused on in its challenge. Id. The TTAB explains that the applicant could have
either: (1) used the TTAB’s “divisional procedure” to separate the non-alcoholic and alcoholic
beverages into distinct applications; or (2) voluntarily deleted the alcoholic goods listed in its
application. Id. Nowhere in the opinion does the TTAB say that an applicant can only save an
overbroad application by deleting the challenged goods and services before a tribunal litigates
the applicant’s bona fide intent.
In sum, the TTAB voided the entire application in Spirits International because the
opposing party put the entire application at issue in its opposition, made a prima facie showing
that the applicant lacked bona fide intent, and the applicant failed to produce any evidence that it

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had a bona fide intent as to any of the goods and services listed in the application. Id. at *2 n.3;
3–4.

As Creative Harbor correctly notes, Spirits International was nothing more than a

straightforward application of the well-established principle that the “absence of any
documentary evidence on the part of an applicant regarding [bona fide] intent constitutes
objective proof sufficient to establish that the applicant lacks a bona fide intention to use its mark
in commerce.” Id. at *3. The decision did not create a new rule that for § 1(b) ITU applications,
as opposed to the § 1(a) use applications identified in Grand Canyon, overbroad applications are
presumptively voidable unless the applicant voluntarily deletes challenged goods and services
from its application upon request.
Several considerations buttress our interpretation of Spirits International. First, contrary
to the district court’s suggestion, this interpretation better harmonizes Spirits International with
Grand Canyon. Grand Canyon’s core holding was that, in the context of § 1(a) use applications,
the harsh remedy of voiding an application entirely was “inappropriate” in cases where “the
mark was used on some of the identified goods or services as of the filing of the application.”
Grand Canyon, 2006 WL 802407, at *1, 3. This holding rested on the “clear distinction between
the situations in which an applicant has committed fraud, or has not used the mark on any of the
goods or services identified in its application,”2 where voiding the application is appropriate, and
a situation in which the “opposer claims only that applicant did not use its mark in connection
with some of the services identified in its application as of the filing of the application,” where
the applicant’s conduct is far less egregious. Id. at *3. It did not, as the district court found, rest
on the applicant’s willingness to delete the offending goods and services prior to adjudication by
a tribunal. Kelly Servs. II, 140 F. Supp. 3d at 621–22. Given Grand Canyon’s strong holding
against voiding applications where the applicant has not committed egregious misconduct, it
would have been odd indeed for the TTAB in Spirits International to have cited Grand Canyon
while adopting the opposite rule in the § 1(b) ITU context without any reasoning explaining why
it departed from Grand Canyon’s approach. See Spirits Int’l, 2011 WL 2909909, at *2 n.3.

2

The analogous situation in the § 1(b) ITU context would be where the applicant lacks bona fide intent as
to all of the goods and services identified in the application. See Spirits Int’l, 2011 WL 2909909, at *3.

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Second, the TTAB’s citation to Wet Seal’s language in Syndicat that “an application will
not be deemed void for lack of a bona fide intention to use absent proof of fraud, or proof of a
lack of bona fide intention to use the mark on all of the goods identified in the application, not
just some of them,” casts significant doubt on the district court’s interpretation of Spirits
International. Syndicat, 2013 WL 5407284, at *15 (quoting Wet Seal, 2007 WL 458529, at *2).
It would have been extremely puzzling for the TTAB to cite its Wet Seal statement reiterating the
Grand Canyon rule if it had rejected that rule just two years earlier in Spirits International.
Finally, the district court’s interpretation would lead to perverse results. Imagine a
hypothetical § 1(b) ITU applicant who submits an application listing 100 goods associated with
the requested mark with a subjective intention to use the mark in connection with all of the
goods. The hypothetical applicant has at least some objective documentary evidence supporting
its bona fide intent as to all 100 goods, but a competitor nevertheless challenges the applicant’s
bona fide intent as to ten of the goods in a declaratory action in federal district court. Under the
district court and Kelly Services’ interpretation of Spirits International, the applicant is put in
quite a quandary: he must either (1) voluntarily delete the challenged goods,3 even if the
challenges lack merit; or (2) risk having his entire application voided if the district court
determines that he lacked bona fide intent for even a single item. If the applicant lacks ironclad
documentary evidence for even one item—which is likely in circumstances where the application
lists a large number of goods and services—his incentive is to delete the challenged goods rather
than risk losing the entire application. Similarly, his competitor is incentivized to bring bona
fide intent challenges to all of the applicant’s future applications, because the competitor can
likely bully the applicant into at least some concessions, and the only consequence for the
competitor if it loses is legal fees, which may be a relative pittance depending on the industry

3

Neither Kelly Services nor the dissent explain how a reviewing court would determine whether an
applicant’s offer to delete the overbroad portions of his application is sufficient to avoid voiding the application
entirely. For instance, at what point in time did Creative Harbor’s opportunity to cure its Applications expire? Was
it permitted to assert that it could prove bona fide intent as to some of the goods and services challenged by Kelly
Services, or was it required to entirely capitulate and delete any item Kelly Services specified? We find these
ambiguities all the more reason to reject the rule proposed by Kelly Services and the dissent. It is it difficult to see
what purpose of the Lanham Act is served by requiring an applicant to risk his entire application if he wishes to
defend his bona fide intent in good faith before the TTAB or a federal court.

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and the value of the mark. If the TTAB intends this result, at a minimum, it is fair to ask that it
say so explicitly, as opposed to adverting to the rule in passing in a footnote.4
Kelly Services argues that Wet Seal and Syndicat’s statements applying Grand Canyon’s
reasoning in the context of § 1(b) ITU applications should not be followed as dicta. It is true that
neither of those cases ultimately needed to apply a remedy, and therefore their statement that “an
application will not be deemed void for lack of a bona fide intention to use absent proof of fraud,
or proof of a lack of bona fide intention to use the mark on all of the goods identified in the
application, not just some of them,” is dicta. See United States v. Wynn, 579 F.3d 567, 577 (6th
Cir. 2009) (“A statement in a case can be considered dicta if it ‘was not necessary to the
determination of the issue on appeal.’” (quoting United States v. Hardin, 539 F.3d 404, 411 (6th
Cir. 2008)). As the Federal Circuit has observed, however, the fact that a court is not bound by
dicta “does not mean” that the dicta “is incorrect.” Nat’l Am. Ins. Co. v. United States, 498 F.3d
1301, 1306 (Fed. Cir. 2007). At a minimum, Wet Seal and Syndicat strongly indicate that the
TTAB views Grand Canyon’s holding as controlling in the § 1(b) ITU application context. And
more importantly, we see no reason why Grand Canyon’s compelling and well-reasoned
rationale should not apply equally to both § 1(a) and § 1(b) applications.

4

The dissent notes that in Bryan Papé and Spello Group, LLC v. Me To We Social Enterprises, Inc.,
2016 WL 1642754, at *4 (T.T.A.B. Feb. 29, 2016) (footnote omitted), an unpublished opinion involving a § 1(b)
ITU application, the TTAB cited Sprits International for the proposition that a “lack of a bona fide intention to use
the mark with respect to any of the goods or services in a class results in sustaining the Opposition against all the
goods or services in that class.” The dissent uses Bryan Papé and another non-precedential § 1(a) case, Yazhong
Inv. Ltd. v. Multi-Media Tech. Ventures, Ltd., 2015 WL 9913815, at *3 n.8 (T.T.A.B. Dec. 18, 2015), to argue that,
since Grand Canyon, the TTAB has consistently held that overbroad applications must be voided in their entirety
unless the applicant voluntarily files a motion to delete the offending goods and services. Post at 1–3. However, the
TTAB’s statement in Bryan Papé stands in stark contrast to the TTAB’s dicta in Wet Seal and Syndicat that “an
application will not be deemed void for lack of a bona fide intention to use absent proof of fraud, or proof of a lack
of bona fide intention to use the mark on all of the goods identified in the application, not just some of them.”
Syndicat, 2013 WL 5407284, at *15 (quoting Wet Seal, 2007 WL 458529, at *2). These statements directly
contradict one another, and are flatly irreconcilable. The TTAB thus has no consistent approach for us to defer to,
and we are left with the task of attempting to harmonize cases that are in tension with one another. For the reasons
explained above, we disagree with the dissent that Spirits International held that ITU applications are void ab initio
if the applicant lacks intent to use any of the goods or services listed therein, and believe that our approach best
harmonizes Spirits International and Grand Canyon, and provides the more sensible legal rule. Moreover, we also
think it better to adopt the approach suggested by Wet Seal and Syndicat, two precedential TTAB decisions, over the
approach suggested by Bryan Papé, a non-precedential decision—particularly since the statement in Bryan Papé
was also arguably dicta because the TTAB did not ultimately apply a remedy in that case. See Bryan Papé,
2016 WL 1642754, at *4.

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Kelly Services counters that if a court can simply delete the offending goods and services
from an overbroad application, applicants have no incentive to carefully draft their applications,
and will be able to simply “squat” on trademarks for up to three years at a time. While there is
some persuasive force to this argument, this consequence seems less severe than the contrary
rule. An applicant whose application is voided may, as in this case, lose his priority to the
trademark forever as against a key competitor. Weighed against that outcome, the potential for
abusive squatting is less compelling.
Accordingly, we hold that when a § 1(b) ITU applicant lacks bona fide intent as to some,
but not all, of the goods and services listed in her application, the application should not be
voided in its entirety absent fraud or other egregious conduct. Grand Canyon, 2006 WL 802407,
at *1–3. Rather, the court should determine as to which goods and services the applicant lacked
bona fide intent, and excise the overbroad portions of the application. We thus hold that the
district court erred in voiding Creative Harbor’s Applications in their entirety.
III.

Remand
At oral argument, Creative Harbor requested that we eschew remand to the district court,

and enter an order deleting the overbroad portions of the Applications. However, because the
district court erroneously determined that any overbreadth in Creative Harbor’s Applications
necessitated voiding the Applications in their entirety, it never generated a complete list of all of
the goods and services for which Creative Harbor lacked bona fide intent. Likewise, the parties
have not addressed which goods and services should be excised from the Applications in their
appellate briefing. Because determining which items to eliminate from the Applications will
likely involve a detailed examination of the record, and necessitate additional briefing from the
parties, the district court is best positioned to conduct this inquiry. We therefore decline Creative
Harbor’s request and remand this case to the district court to determine in the first instance which
items should be deleted from the Applications. See, e.g., White v. Burlington N. & Santa Fe R.R.
Co., 364 F.3d 789, 808 (6th Cir. 2004) (finding remand appropriate where consideration of the
remaining issues required “a careful examination of the entire record”).

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On remand, the district court should evaluate each of the thirty-six goods and services
listed in the Applications, and make individualized determinations as to whether Creative
Harbor's objective documentary evidence establishes a bona fide intention to eventually use
those items in commerce.5 The district court may wish to conduct an evidentiary hearing in
service of this inquiry, although we do not require it to do so.
CONCLUSION
For the foregoing reasons, we AFFIRM the district court’s determination that Creative
Harbor lacked bona fide intent as to some, but not all of the goods and services listed in the
Applications. We hold, however, that the district court erroneously voided the Applications in
their entirety, and VACATE the district court’s judgment. We REMAND with instructions for
the district court to determine which goods and services were improperly included in the
Applications, and excise the improper items. We do not limit the district court’s ability to
conduct additional appropriate proceedings consistent with this opinion.

5

In an appropriate case, where the disputed applications list a particularly large number of goods and
services, district courts may find it feasible to determine bona fide intent by reference to representative examples.
However, because the Applications at issue here list only thirty-six goods and services, we think the better approach
in the instant case is for the district court to issue individual findings regarding Creative Harbor’s bona fide intent as
to each of the items listed in the Applications.

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_________________________________________________________________________
CONCURRING IN PART AND DISSENTING IN PART AND FROM THE JUDGMENT
_________________________________________________________________________
ALICE M. BATCHELDER, Circuit Judge, concurring in part and dissenting in part and
dissenting from the judgment. While I agree with my colleagues that Kelly Services met its
burden of production and that Creative Harbor failed to demonstrate a bona fide intent to use the
Mark in connection with at least some of the goods and services listed in its ITU applications, I
disagree with their proposed remedy and disposition of this case. Accordingly, I respectfully
dissent from the judgment.
Although the majority opinion provides a more-or-less accurate summary of the
inconsistent landscape of TTAB precedent that has led to the dispute in this appeal, it overlooks
some distinguishing facts that support the district court’s opinion. A more in-depth review of
Grand Canyon would be helpful, even though that case concerned § 1(a) use applications. In
Grand Canyon, the TTAB held that in the absence of fraud, “an applicant who bases its
application on Section 1(a) (use in commerce) but who did not use the mark on some or all of the
goods or services identified in the application may ‘cure’ this problem by amending its basis to
Section 1(b) (intent to use).” Grand Canyon W. Ranch, LLC v. Hualapai Tribe, 78 U.S.P.Q.2d
1696, 2006 WL 802407, at *3 (T.T.A.B. 2006) (footnote omitted). It turns out that the applicant
in Grand Canyon had already “filed a motion to amend its application to delete the services for
which opposer claims applicant did not use the mark as of the filing of the application,” which
meant that the “applicant ha[d] essentially agreed to accept judgment with respect to those
services.” Id. The TTAB then granted the applicant’s motion to amend its application, rather
than voiding the entire application. Id.
Contrast this with Wet Seal, the case which the majority views as extending Grand
Canyon’s holding to § 1(b) ITU applications. In Wet Seal, the TTAB, citing Grand Canyon,
broadly stated that “an application will not be deemed void for lack of bona fide intention to use
absent proof of fraud, or proof of a lack of bona fide intention to use the mark on all of the goods
identified in the application, not just some of them.”

The Wet Seal, Inc. v. F.D. Mgmt.,

82 U.S.P.Q.2d 1629, 2007 WL 458529, at *2 (T.T.A.B. 2007) (footnotes and citation omitted).

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Importantly, the TTAB stated, “[W]e will decide this issue in terms of whether the items, if any,
for which opposer has shown applicant’s lack of bona fide intention to use the mark should be
deleted from the application.” Id. At first blush, this would appear to support the majority’s
holding that the district court can decide, without the applicant’s motion to amend its application,
which items to strike from an ITU application. Its pronouncement notwithstanding, the TTAB
held in Wet Seal that the opposer “[fell] far short of demonstrating by a preponderance of the
evidence that applicant lacked a bona fide intention to use the mark in connection with any of the
identified products,” and dismissed the challenge on those grounds. Id. at *14. Therefore, the
district court was correct in noting that the supposed adoption of Grand Canyon’s remedy in
cases involving § 1(b) ITU applications was dicta; it was not essential to the determination of the
case at hand. See Hinchman v. Moore, 312 F.3d 198, 203–04 (6th Cir. 2002) (quoting Black’s
Law Dictionary 454 (6th ed. 1990)).1
Within this context, the district court’s second holding was also correct: Spirits
International remains truest to the import of Grand Canyon. This is because the TTAB in Spirits
International clearly reiterated Grand Canyon’s remedy, in which the “applicant could have
moved to delete alcoholic beverages from its identification if applicant did not have a bona fide
intention to use its mark in commerce with respect to such goods, but did with respect to nonalcoholic beverages.”

Spirits Int’l, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis

Kooperatifleri Birligi, 99 U.S.P.Q.2d 1545, 2011 WL 2909909, at *2 n.3 (T.T.A.B. 2011).
Unlike in Wet Seal, the opposer in Spirits International met its burden of production. Id. at *4.
Thus, “[t]he burden . . . shifts to applicant to come forward with evidence which would
adequately explain or outweigh the failure to provide such documentary evidence.” Id. Because
the applicant in Spirits International did not rebut the opposer’s evidence that applicant lacked a
bona fide intent as to some of the items in its application—and did not appear to move to amend
its application as did the applicant in Grand Canyon—the TTAB sustained the opposition

1

The majority opinion notes that while we are not bound by dicta, the dicta is not necessarily incorrect.
(Maj. Op. at 24 (citing Nat’l Am. Ins. Co. v. United States, 498 F.3d 1301, 1306 (Fed. Cir. 2007))). I agree.
However, this does not mean that we should use dicta to determine the outcome of this case when there is no
indication of how the TTAB would have disposed of the opposer’s challenge in Wet Seal had (1) the opposer met its
burden of production and (2) the applicant failed to provide objective evidence of bona fide intent as to all of the
products in its application.

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“solely on the ground that applicant lacks a bona fide intention to use the mark in commerce.”
Id. at *4–5. The majority’s contention that Spirits International is limited to cases in which the
applicant fails to produce any evidence that it had a bona fide intent as to any of the goods and
services listed in the application misses the mark. (See Maj. Op. at 21–22.) The TTAB has
continued to cite Spirits for the proposition that applications for which the applicant lacks bona
fide intent even as to only one item will be voided in their entirety. See, e.g., Bryan Papé and
Spello Group, LLC v. Me To We Social Enters., Inc., Opposition No. 91218595, 2016 WL
1642754, at *4 (T.T.A.B. Feb. 29, 2016) (non-precedential opinion) (“A lack of a bona fide
intention to use the mark with respect to any of the goods or services in a class results in
sustaining the Opposition against all the goods or services in that class.”) (footnote omitted)
(ultimately denying summary judgment for opposer because of existence of genuine issue of
material fact).2

I therefore do not believe that the majority’s attempt to narrow Spirits

International reaches the right result.
Syndicat, which Creative Harbor and the majority believe dictates the majority’s remedy,
only superficially conflicts with Spirits International or Grand Canyon. At the outset of its
opinion in Syndicat, the TTAB noted, “During the oral hearing, counsel agreed that, should
applicant’s application otherwise be in condition for issuance, applicant would accept judgment
on this issue and deletion of ‘distilled spirits’ and ‘liquors’ from the application.” Syndicat Des
Proprietaires Viticulteurs de Chateauneuf-du-Pape v. Pasquier DesVignes, Opposition No.
91179408, 2013 WL 5407284, at *1 (T.T.A.B. June 14, 2013). Then again, at the conclusion of
its opinion, the TTAB stated, “As noted at the outset, applicant admits to its lack of a bona fide
intention to use the applied-for mark on ‘distilled spirits’ or ‘liquors.’ Therefore, applicant is not
entitled to register its mark for these goods.” Id. at *14. The TTAB’s remedy in Syndicat, as the
2

The TTAB also cited Spirits International in conjunction with Grand Canyon in a case involving a § 1(a)
use application. See Yazhong Inv. Ltd. v. Multi-Media Tech. Ventures, Ltd., Cancellation No. 92056548, 2015 WL
9913815, at *3 n.8 (T.T.A.B. Dec. 18, 2015) (non-precedential opinion) (“We note that Respondent has not filed a
motion to delete the goods and services for which there was no use prior to the filing dates of the Statements of Use.
Absent a finding of fraud, a registrant which did not use the mark on all of the goods or services identified in the
underlying application may ‘cure’ this problem by deleting from the registration the goods or services for which it
had not used the mark as of the filing date of the application and accepting judgment with respect to the deleted
goods or services. [Citing Spirits International and Grand Canyon] . . . If a registrant fails to effect a cure to delete
certain goods or services for which there was no use, and a petition is successful in proving non-use with respect to
any of the goods or services in that class at the time of application (or in this case, when the Statements of Use were
filed), the Board proceeding will be sustained against the class in its entirety.” (emphasis added)).

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majority correctly cites, was to amend the application “to reflect those goods with which
[applicant] has a bona fide intent to use the mark . . . .” Id. at *15. Instead of being some new
remedy at odds with Spirits International or a remedy fashioned in the mold of Wet Seal’s dicta,
this resembles the remedy that the TTAB used in Grand Canyon, in which the applicant had
moved—prior to entry of the judgment—for an amendment to its § 1(a) use application.
Spirits International essentially applied the Grand Canyon rule, and so the majority’s
opinion that the district court “misread” Spirits International or failed to apply “the more
forgiving rule articulated in Grand Canyon” does not make sense. (Maj. Op. at 19.) The district
court expressly found that Creative Harbor’s “modest” offer to amend its applications to
eliminate one service and one good did “not cure the material overbreadth in Creative Harbor’s
listing of the goods and services on which it claimed an intent to use the Mark.” The district
court continued, “Indeed, even with Creative Harbor’s proposed deletions, the Creative ITUs still
list services (e.g., employee relations information services, business consulting, professional
credentialing verification services) and goods (e.g., computer game software, computer hardware
for integrating text and audio) on which Creative Harbor lacks a firm intent to use the Mark.”
TTAB precedent suggests that it is incumbent upon the applicant to amend its application
to eliminate portions of its § 1(b) ITU application for which it cannot demonstrate bona fide
intent, or else risk having the entire application voided.

Creative Harbor refused to take

advantage of this remedy. The district court therefore correctly voided both of Creative Harbor’s
applications ab initio. Because my colleagues reach the opposite conclusion, I respectfully
dissent.