There have not been many reported decisions involving the “bona fide intent” standard. The first significant decision, Commodore Electronics Ltd. v. CBM Kabushiki Kaisha,3 involved an application for CBM for a variety of electronics. After reviewing the legislative history of the Act, the Trademark Office stated that
“[a]lthough admittedly a close question, we hold that absent other facts which adequately explain or outweigh the failure of an applicant to have any documents supportive of or bearing upon its claimed intent to use its mark in commerce, the absence of any documentary evidence on the part of an applicant regarding such intent is sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce.”
Thus, the Trademark Office focused on the existence of documentary evidence to support the claimed bona fide intent, in the absence of which the applicant would need to provide “other facts” that “explain or outweigh” the failure to provide such documents.
The following year, in Lane Ltd. v. Jackson International Trading Co.,4 the Trademark Office confirmed that the mere statement of a subjective intent to use a mark in a trademark application is insufficient to demonstrate a “bona fide intent” as required by the Act. However, the applicant had some documentary evidence regarding the “formulation and implementation of its business plan and licensing program,” as well as a history of its predecessor’s licensing of a similar mark, all of which substantiated its claimed bona fide intent.
The Trademark Office was then quiet on this topic for more than a dozen years. However, two relevant cases were published in 2008. In L.C. Licensing Inc. v. Berman,5 the Office stated that the applicant’s “decision to forgo a business model until after the opposition is decided does not explain his failure to have any documents whatsoever at the time the application was filed that showed an intent to use the mark . . . The mere assertion of an intent to use the mark without corroboration of any sort, whether documentary or otherwise, is not likely to provide credible evidence to establish a bona fide intention to use the mark.” Thus, the application to register ENYCE for various automobile accessories was denied due to the applicant’s lack of a bona fide intent to use the mark.
Later in 2008, in Boston Red Sox Baseball Club LP v. Sherman,6 the Trademark Office noted that while an opposer has the initial burden to demonstrate by a preponderance of evidence the applicant’s lack of a bona fide intent to use the mark, the absence of any documentary evidence on the part of an applicant constitutes “objective proof sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce.” Once the opposer shows that the applicant has not provided any documents in response to appropriate discovery request, “the burden shifts to applicant to come forward with evidence which would explain or outweigh his failure to provide such documentary evidence.” In this case, the applicant’s “broad and general statements in his brief regarding his asserted marketing experience [were] not supported by any specific facts, or by any evidence.” The Trademark Office stated further that “[w]e can accord no evidentiary value or consideration to unsupported factual statements made by a party in its brief. . . . Furthermore, applicant’s claim, in effect, that an extensive and diverse range of nearly 150 items of clothing could be marketed ‘essentially overnight’ and ‘with no forward planning’ is simply not credible.” Thus, mere subjective self-confidence and assertions of a strong willingness to use the mark are not sufficient.