Evidence of Intent to Use Before the US Trademark Office

The latest issue of The Trademark Reporter includes Sandra Edelman's timely and informative article on bona fide intent, entitled "Proving Your Bona Fides - Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act," 99 Trademark Reporter 763 (May-June 2009).

 

According to the TTABlog, the U.S. Trademark Trial and Appeal Board's recent decision in Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) [precedential], brought the bona fide intent issue to the forefront for many trademark practitioners. There the Board sustained Honda's opposition to Herr Winkelmann's Section 44(e) application to register the mark V.I.C. for vehicles, ruling on summary judgment that Winkelmann had failed to establish the requisite bona fide intent to use his mark in the USA.

According to Edelman,"registration applicants should be very careful about including too many products or services in their intent-to-use based applications, and should maintain some minimal level of contemporaneous documentation and provable business rationale for the products or services listed in the application." 

The affirmative activities that have been deemed indicative of the presence of a bona fide intent to use a trademark in commerce include:

• conducting a trademark availability search
• 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 in which to perform the services

The factual circumstances that have been deemed indicative of a lack of a bona fide intent to use include:

·     an unrealistically broad listing of goods and services;

• a defensive intent to prevent others from using the mark;
• the filing of numerous intent-to-use applications without ever using them or subsequently abandoning them;
• the absence of any steps or planning to use the mark;
• lack of industry-relevant experience;
• misrepresentation of goods or services in order to reserve a mark