The attention of trademark owners and practitioners should be focused on the bona fide intent to use a mark and on the importance of maintaining documentation of such intent and of actual use for each of the goods and services claimed in an application or registration.
In the U.S., a trademark applicant must declare its bona fide intent to use a mark when filing an application based either on intent to use or on a foreign registration, whether under Section 44(e) or the Madrid Protocol. Applications that claim goods and services more broadly than the bona fide intent to use the mark in the U.S. supports are vulnerable to attack.1 All registrants must periodically attest to continued use of all goods and services claimed in a registration or delete those not still in use. Despite these requirements, it is not uncommon to find applications claiming broad categories of goods and services that likely include some that the applicant has no intention of offering in the U.S.
Recent developments make this not-uncommon practice even riskier. The U.S. Patent and Trademark Office (PTO) recently announced a two-year pilot program that will require 500 randomly selected registrants filing affidavits of use, to provide specific evidence of continued use for two additional goods/services (of the PTO’s choosing) from each class covered by the registration. If the registrant deletes the goods/services in question, the PTO may apply the requirement to other claimed goods and services. The purpose of this pilot is both exploratory – to see how accurate the Registers are – and cautionary – to discourage overly zealous claims of use.
A dispute between Nike Inc. and Bauer Bros. LLC with respect to the "DON’T TREAD ON ME" mark used with clothing highlights the importance of maintaining proof of both initial and current use. Bauer claimed ownership of a registration for "DON’T TREAD ON ME" with a first use date in 2004 that predated Nike’s adoption of the mark. Bauer brought suit against Nike, alleging unfair competition and trademark infringement. Nike counterclaimed, based on fraud. Bauer was not, however, able to provide any documentary evidence supporting its claim that it began selling shirts bearing the mark in 2004 and admitted to listing an array of apparel in its application wider than its actual use supported. The U.S. District Court for the Southern District of California found that Bauer was not the senior user, declared Bauer’s registration void ab initio, and denied Bauer’s motion 1 See the report in our January 2012 IP newsletter ("Bona Fide Intent to Use a Mark Remains a Substantive, Enforceable Requirement") for summary judgment as to fraud, saying that there was sufficient evidence to support an inference of fraud.2
These developments demonstrate the importance of preserving evidence of the initial use of a mark and of its continued use, for each of the claimed goods and services in a registration.