1 1 1 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 LLP CIPA-ITMA-AIPLA Joint Meeting London, England - March 10, 2014

2 2 2 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

3 3 3 AIPLA Firm Logo Bona Fide Intent to Use

4 4 4 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

5 5 5 AIPLA Firm Logo Challenging Bona Fide Intent to Use

6 6 6 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.”

7 7 7 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

8 8 8 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 discussing an office action response –Three internal s 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

9 9 9 AIPLA Firm Logo Amending an Application when Bona Fide Intent to Use is Challenged

10 10 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

11 11 AIPLA Firm Logo Effect on Filing Strategies for Applicants

12 12 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

13 13 AIPLA Firm Logo Attacking An Intent as Less Than Bona Fide

14 14 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

15 15 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.

16 16 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

17 17 AIPLA Firm Logo SUMMARY

18 18 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

19 19 AIPLA Firm Logo Thank you ANTHONY VENTURINO Partner Novak Druce Connolly Bove + Quigg LLP 1875 Eye Street, N.W., Eleventh Floor Washington, DC © 2014 Novak Druce. All Rights Reserved.