You Have To Really Mean It, And Be Prepared To Prove it, When You Declare An Intent To Use A Mark
Note: This blog post is part of a series that reviews and discusses a number of significant trademark-related decisions handed down in 2015, including two from the U.S. Supreme Court and several from the U.S. Court of Appeals for the Federal Circuit and other Circuit Courts. Going forward, these rulings will impact how parties protect their trademark assets, including in particular the strategies that parties will need to employ to maximize their likelihood of success in litigation. To follow the entire blog series, click here.
Prior to the Trademark Law Revision Act of 1988
("TLRA"), the owner of a mark had to be using his mark
when he applied for registration. See Aycock Eng'g, Inc.
v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009). The TLRA
changed this requirement and allowed mark owners to apply for
registration before they actually used the mark in commerce, so
long as the owner had a "bona fide intention ... to use [the]
mark in commerce" in the future. 15 U.S.C. § 1051(b)(1);
Lanham Act Section 1(b). While an applicant can file for
registration of his mark based on an intention to use the mark in
the future, he must in due course either (1) file a verified
statement of actual use of the mark in commerce, or (2) convert his
application to a use-based application. 15 U.S.C. §
1051(b)(3), (c), (d). Simply put, applicants must show that the
mark is being used in commerce in order for the mark to be
registered.
Until recently, it was an open question whether a party could
oppose registration of a mark on the basis that there was no bona
fide intent to use the mark. The Federal Circuit has now confirmed
that this is, indeed, an appropriate basis to challenge
registration because "[a]n opposer is 'entitled to rely on
any statutory ground which negates [an applicant's] right to
the subject registration.'" See M.Z. Berger& Co.,
Inc. v. Swatch AG, 787 F.3d 1368, 1375 (Fed. Cir. 2015)
(quoting Lipton Indus., Inc. v. Ralston Purina Co., 670
F.2d 1024, 1031 (CCPA 1982) (citing Warth v. Seldin, 422
U.S. 490, 501 (1975))); see also Aktieselskabet AF 21.Nov. v.
Fame Jeans Inc., 525 F.3d 8, 21 (D.C. Cir. 2008) (holding the
same).
Having decided that lack of a bona fide intent is an appropriate
basis for an opposition, the court turned to the question of what
"bona fide intention" means under Section 1(b) of the
Lanham Act. Recognizing that there is no statutory definition of
"bona fide intention," the Federal Circuit held that
"the applicant's intent must be demonstrable and more than
a mere subjective belief." Id. (citing
3McCarthy 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 the application, I did truly intend to use the
mark at some time in the future.'")). "[W]hether an
applicant had a 'boda fide intent' to use the mark in
commerce at the time of the application requires objective evidence
of intent." Id. at 1376. "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. This
determination is to be made on a case-by-case basis considering the
totality of the circumstances. Id.
It will be interesting to watch as the cases develop on this issue,
particularly because it is such a fact-intensive inquiry. However,
the Berger case itself provides a good beginning point. In
Berger, the applicant filed an intent-to-use application
for the mark "iWatch" for more than 30 goods, each of
which belonged to one of three general categories, namely watches,
clocks and goods related to clocks and/or watches (e.g.,
watch bands, clock dials). Id. at 1370. Swatch opposed
registration on the basis that the mark would be confusingly
similar to its own "Swatch" mark and later added a claim
that the applicant lacked a bona fide intent to use the mark at the
time that it filed the application. Id. During discovery,
the applicant's CEO testified that the applicant never intended
for the mark to be used for any goods other than watches, and the
paralegal who filed the application testified that the broad list
of goods was "standard" and used to "leave all doors
open." Id. at 1371. Moreover, the evidence relating
to the "watch" category of goods was inconsistent and
incomplete regarding the applicant's intent to commercialize
the "iWatch" mark on any watch-related goods.
Id. Of particular importance, the applicant's
documentary evidence consisted solely of documents relating to the
prosecution of the application, rather than anything that would
show a bona fide intent to commercialize a product in connection
with the "iWatch" mark, e.g., a marketing plan
created before the application was filed. Id. The TTAB
sustained Swatch's opposition and refused registration of the
"iWatch" mark. Id. at 1376-78.
Based on Berger, practitioners must recognize that one day
they may have to produce objective evidence showing that a bona
fide intent to use the mark in connection with
all goods and services identified in the
application existed at the time that an intent-to-use application
was filed. Thus, practitioners cannot use an intent-to-use
application simply to reserve a spot for a mark (or goods or
services). After Berger, we anticipate that this issue
will arise more frequently in opposition and cancellation
proceedings, and may even give rise to inequitable conduct issues.
Thus, practitioners should be prepared to address this issue and to
produce the necessary evidence, including documents and testimonial
evidence, to confirm that the requisite intent to use existed when
the application was filed. To ensure that the evidence will be
available if needed, applicants and practitioners should consider
maintaining the relevant documents and information in the
application file, even if they are not submitted to the PTO during
prosecution. Failing to present sufficient evidence, or worse
– presenting conflicting evidence as the applicant in
Berger did – will result in a registration being
denied or cancelled.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.