HOW TO AVOID INVALID U.S. TRADEMARK REGISTRATIONS BY BEING ABLE TO PROVE A BONA FIDE INTENT TO USE IN THE U.S. Presented by Howard J. Shire 13 October 2015

The Lanham Act – U.S. Trademark Act Provides for a national system of trademark registration Protects the owner of a federally registered mark against the use of similar marks if such use is likely to result in consumer confusion, or if the dilution of a famous mark is likely to occur

Use in Commerce Application §1(a) of the Trademark Act, 15 U.S.C. §1051(a): applicant must use the mark in commerce on or in connection with all the goods and services listed in the application as of the application filing date

Intent to Use Application § 1(b) of the Trademark Act, 15 U.S.C. 1051(b): applicant may file an intent to use application in the USPTO based on a bona fide intention to use a mark in commerce “under circumstances showing the good faith of such person” Registration will not issue until a declaration of use is filed

Why file an ITU? Key advantage to filing an ITU application rather than waiting for use in commerce to begin: applicant receives the benefit of the filing date as their “constructive use” date for purposes of nationwide priority

US vs. EU U.S. law differs from E.U. Law European Union Community Trade Mark (CTM): applicant may register a trademark in connection with a laundry list of goods without use and without having to declare an intent to use the mark in connection with the goods Possible to obtain trademark registration covering a very broad range of goods even if the registrant has no use of the mark for the goods or intent to use the mark

Lanham Act – Benefit For Non-U.S. Applicants “A mark duly registered in the country of origin of the foreign applicant may be registered [in the U.S.] . . . The application must state the applicant’s bona fide intention to use the mark in commerce, but use in commerce is not required prior to registration.” 15 U.S.C. § 1126(e)

Bona Fide Intention to Use The foreign entity filing based on foreign registration must have a bona fide intention to use the applied-for mark in the U.S. in relation to the applied-for goods or services If challenged in an opposition, cancellation, or a court litigation, the applicant or registrant must present evidence of an objective intent to use, as of the date the U.S. application was filed, not merely a subjective, good faith intent to use

Selecting Goods and Services Tempting to list a broad array of goods/services applicant hopes to sell at some point or that applicant does not want someone else to sell under the mark at some point Without bona fide intent and documentary evidence for each specific good/service listed the entire application or issued registration is in jeopardy

Selecting Goods and Services Declarations are sufficient to support the filing of intent-to-use applications But in the event of a challenge applicant must be able to muster objective evidence demonstrating a bona fide intent to commercialize its applied-for trademark at the time the application was filed

Examples of Broad U.S. Registrations Based on Foreign Registrations

Examples of Broad U.S. Registrations Based on Foreign Registrations

Examples of Broad U.S. Registrations Based on Foreign Registrations

Swiss Grill Ltd. et al. v. Wolf Steel Ltd Swiss Grill Ltd. et al. v. Wolf Steel Ltd., Opposition Number 91206859 (T.T.A.B. September 10, 2015) Canada-based Wolf Steel, which sold products under the mark NAPOLEAN for more than 30 years, sought registration for SWISS GRILLS for barbecues and outdoor grills Wolf Steel did not produce any evidence of bona fide intent to use SWISS GRILLS as of its filing date Wolf Steel did not show U.S. manufacturing activities or steps to retain U.S. distributors

Swiss Grill Ltd. et al. v. Wolf Steel Ltd Swiss Grill Ltd. et al. v. Wolf Steel Ltd., Opposition Number 91206859 (T.T.A.B. September 10, 2015) Board sustained opposition finding that Wolf Steel, at the time it filed its application, lacked real intent to use the mark in commerce for the products it identified Board also said if Wolf Steel sought registration to thwart Swiss Grill’s entry into the market that would negate a “bona fide” intention and “good will” under the Trademark Act

SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 U. S. P. Q SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 U.S.P.Q.2d 1300 (T.T.A.B. 2010) Omnisource applied for the mark AQUAJET, certifying its intent to use the mark in connection with “dental instruments, namely oral irrigators” SmithKline opposed claiming that Omnisource lacked a bona fide intent to use the mark in commerce when the application was filed SmithKline alleged that Omnisource had not used or licensed the mark and had not produced evidence, such as market research, supporting its intent to use

SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 U. S. P. Q SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 U.S.P.Q.2d 1300 (T.T.A.B. 2010) Board found the lack of documentary evidence “objective proof that is sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce” Board held that SmithKline had fulfilled its burden of proving, by a preponderance of the evidence, that Omnisource lacked a bona fide intent to use and denied the application for registration

Honda Motor Co. , Ltd. v. Friedrich Winkelmann, 90 U. S. P. Q Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 U.S.P.Q.2d 1660 (T.T.A.B. 2009) Board held that an applicant’s European registration and use of the mark V.I.C. in Europe in connection with “vehicles for transportation” was insufficient to show an intent to use the mark in the U.S. In view of the applicant’s lack of documentary evidence, such as business plans or marketing strategies showing an intent to use the mark in the U.S., along with the absence of other facts to explain or outweigh the failure to provide such evidence, Board granted summary judgment for Honda and refused registration of the V.I.C. mark

Spirits International B. V. v. S. S. Taris Zeytin, 99 U. S. P. Q Spirits International B.V. v. S.S. Taris Zeytin, 99 U.S.P.Q.2d 1545 (T.T.A.B. 2011) Applicant failed to present documentary evidence of its intention to use mark with spirits, such as attempts to comply with U.S. alcohol regulations, stating in an interrogatory response that only olive oil is sold under the mark in the U.S. Finding that the opposer had met its initial burden of demonstrating by a preponderance of the evidence that the applicant lacked intent to use on the filing date of the application, TTAB sustained the opposition

iWatch. M. Z. Berger & Co. v. Swatch AG, Case No. 14-1219 (Fed. Cir iWatch. M.Z. Berger & Co. v. Swatch AG, Case No. 14-1219 (Fed. Cir., June 4, 2015) TTAB affirmed by the Fed. Cir. Fed. Cir.: Evidence must show that the applicant had a “firm” intent to use a mark and that the applicant did not intend to merely reserve a right in the mark Fed Cir.: To determine whether an applicant had demonstrated this intent, the Board may consider the totality of the circumstances on a case-by-case basis, such as that there were no samples of the goods and no evidence of market research into consumer watch preferences

Evidence of Intent to Use Don’t lose application and priority! Be prepared with evidence of a bona fide intention to use its mark: U.S. tailored research and development U.S. market research U.S. manufacturing activities Steps to retain U.S. distributors Steps to obtain any required U.S. governmental approval No not blindly apply based on the goods/services covered in a foreign registration

Thank you Questions?