111 AIPLA

Firm Logo

American Intellectual Property Law Association

Message from the USPTO is Clear– Document Intent to Use the Mark

When Filing an Application

Anthony Venturino

Novak Druce Connolly Bove + Quigg LLPCIPA-ITMA-AIPLA Joint Meeting

London, England - March 10, 2014

222 AIPLA

Firm Logo

Overview

• Bona Fide Intent To Use• 2013 Cases Challenging Bona Fide Intent to Use• Amending Challenged Applications • Effect on Applicant Filing Strategies• Strategy to Attack Intent to Use

333 AIPLA

Firm Logo

Bona Fide Intent to Use

444 AIPLA

Firm Logo

Relevant Statute and TMEP

• Under Section 1(b) of the Trademark Act an Applicant may file an application based on a bona fide intention to use a mark in commerce “under circumstances showing the good faith of such person.”– Intent to use is also required for applications claiming a

foreign basis under §44 and §66

– There must be intent to use for everything in the §1b, §44, or§66 application when the declaration is signed

• Usually, applicant’s declaration of bona fide intent to use the mark in commerce is sufficient during examination TMEP §1101

• Challenges come during oppositions

555 AIPLA

Firm Logo

Challenging Bona Fide Intent to Use

666 AIPLA

Firm Logo

Honda Motor Co. v. Winkelmann

• Non-U.S. applicants alleging a bona fide intent to use their marks in the US are held to the same standards as domestic counterparts.

• The opposer asserted applicant’s discovery responses established his lack of a bona fide intent to use his mark with the claimed goods, which included “vehicles for transportation,” as of the application’s filing date

• The proof of intent was found deficient for two reasons.  – It established only the applicant’s intent to use the mark in

connection with “car care packages or promotional material, not the vehicles themselves.”  

– The materials submitted by the applicant were of foreign origin, “these documents do not show that [the] applicant has an intent to use the mark in the United States.”  

777 AIPLA

Firm Logo

PRL USA Holdings, Inc. v. Rich C. Young

• Provide contemporaneous documents showing Applicants efforts to use the mark in the US for all goods and services

• When challenged, the TTAB requires applicant provide objective evidence of its bona fide intent to use the mark– “An applicant’s bona fide intent to use a mark must reflect an

intention that is firm, though it may be contingent on the outcome of an event and must reflect an intention to use the mark ‘in the ordinary course of trade,…and not…merely to reserve a right in a mark.”

• In PRL Holdings, Applicant failed to supply responsive documents demonstrating his intent to use the mark– Applicant admitted he had no business planning– Asserting he would proceed with planning if the application was

approved was insufficient

888 AIPLA

Firm Logo

Swatch AG v. M.Z. Berger & Co.

• Bona fide intent is an objective determination based on all the circumstances

• Application for IWATCH – evidence of bona fide intent– Trademark search– One internal email discussing an office action response– Three internal emails demonstrating use of the mark on a mock up

of a clock and watch – created after the application was filed– Testimony by Applicant representatives

• TTAB voided the application based on the circumstances– Applicant provided some documentation and testimony on efforts to

use the mark– However, the testimony was inconsistent, no efforts beyond

brainstorming were made to develop products, applicant ceased efforts once the opposition was filed

999 AIPLA

Firm Logo

Amending an Application when Bona Fide Intent to Use

is Challenged

101010 AIPLA

Firm Logo

Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes

• Is an entire application void or can it be amended?

• In Syndicat (2013), – Applicant agreed to amend the application to the goods for which

there was a demonstrated intent– TTAB allowed the application for goods with demonstrated intent

– TTAB sustained the opposition to the other goods

• Compare this to the 2011 decision, Spirits Intl, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, in which the Board sustained an opposition of all goods in a certain class when Applicant failed to provide evidence of a bona fide intent to use on some of the applied-for goods

111111 AIPLA

Firm Logo

Effect on Filing Strategies for Applicants

121212 AIPLA

Firm Logo

Review Your Applied-For Goods/Services

• The US requires a bona fide intent to use on all applied-for goods/services

• Narrow your goods/services if applying in the US or extending a home country registration to the US

• Maintain documentary evidence in the event of a challenge– Examples; business plans, promotional activities, discussions with

manufacturers, attempts to enter into contracts

• As evidenced by the case law presented, an Applicant must do more than provide testimony, a search and an idea

131313 AIPLA

Firm Logo

Attacking An Intent as Less Than Bona Fide

141414 AIPLA

Firm Logo

Discovery is the key to this attack

• At the time of filing, an Opposer/Petitioner rarely knows this basis is available

• Fact discovery typically uncovers this information (interrogatories, admissions, depositions)

• Once this challenge is discovered, challengers should promptly seek leave to amend the notice/petition to add this basis (the TTAB has discretion to allow leave to amend if there is prejudice to the other side)

• While it is difficult to prove this claim on summary judgment, admissions or a complete lack of documentary evidence can establish a prima facie case and prevail like in PRL USA Holdings

151515 AIPLA

Firm Logo

Evidence that, by itself, does not indicate intent to use*

• A trademark search prior to filing

• The capacity to manufacture, if other facts suggest a lack of intent

• Non-contemporaneous efforts years after filing

• Filing numerous intent-to-use applications without ever using them or subsequently abandoning them

• Waiting for USPTO approval to begin development

• Adding/goods service, such as “parts” that might be included

• Filing an application• Unclear testimony• No explanation for no

documentation• An unrealistically broad listing of

goods and services• a defensive intent to prevent

others from using the mark

*There is no bright line test. Other factors might be present to support a bona fide intent to use the mark in commerce.

161616 AIPLA

Firm Logo

Evidence indicating intent to use

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

• Using a mark in international jurisdictions

• Using a mark in test marketing • 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.

• Obtaining commercial space to perform the services

171717 AIPLA

Firm Logo

SUMMARY

181818 AIPLA

Firm Logo

What should you do

• Review the list of goods and services carefully before applying in the US, or seeking to extend their home country registration to the US

• Especially review long lists of permitted in foreign countries

• Be careful adopting Examiner’s suggestions to amend the identification of goods and services during prosecution

• If during prosecution the applicant decides it no longer intends to use the mark on some goods or services, delete them

• Prepare and maintain documentary evidence in the event of a challenge– business plans, – promotional activities, – discussions with

manufacturers,– attempts to enter into

contracts, and – the like.

• The documentary evidence should cover the full range of goods and services in the US application

191919 AIPLA

Firm Logo

Thank you

ANTHONY VENTURINOPartner

Novak Druce Connolly Bove + Quigg LLP1875 Eye Street, N.W., Eleventh Floor

Washington, DC 20006

+1-202-331-7111

tony.venturino@novakdruce.com

© 2014 Novak Druce. All Rights Reserved. www.novakdruce.com