M.Z. Berger & Co., Inc. v. Swtch AG, No. 14-1219 (Fed. Cir. 2015)
Annotate this CaseBerger manufactures, imports, and sells watches, clocks, and personal care products. It filed an intent-to-use application at the Patent and Trademark Office, to register the mark “iWatch” for 30 different goods in the general categories: watches, clocks, and goods related to watches or clocks. Berger declared “a bona fide intention to use or use through [Berger’s] related company or licensee the mark in commerce on or in connection with the identified goods and/or services.” The PTO approved the application for publication. Swatch filed an opposition, claiming that “iWatch” is confusingly similar to its mark, “Swatch,” and that Berger lacked a bona fide intent to use the mark in commerce (15 U.S.C. 1051(b)(1)). The Trademark Trial and Appeal Board considered the testimony of Berger’s owner and CEO that he did not expect the iWatch mark to be used for clocks and personal care products. His paralegal testified that she was told that the list was intended to “leave all doors open.” The Board concluded that Berger lacked intent to use the mark on clocks and related goods and lacked a genuine plan to commercialize the mark on watches, but only intended to reserve a right in the mark. The Federal Circuit affirmed, finding the conclusion supported by substantial evidence.
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