Foreign trademark owners frequently apply to register marks under Sections 44(d) and (e) or Section 66 of the Trademark Act, relying upon a home-country registration or application and not upon actual use of a mark in the United States. However, a foreign applicant must state that it has a bona fide intention to use its mark in U.S. commerce at the time the application is filed. Recent decisions on the issue of an applicant's bona fide intent require mark owners to support assertions of such intent with documentation. Foreign applicants are likely to be particularly vulnerable to attacks upon bona fide intent to use because foreign applications and registrations that are the basis of Section 44 and 66 filings typically include long lists of goods and/or services for which the mark has never been used anywhere. If challenged, a foreign trademark applicant or registrant may find it very difficult to produce documentation showing a bona fide intention to use the mark in U.S. commerce at the time of filing.
All applications filed with a claim of bona fide intent to use a mark in U.S. commerce are void ab initio, and any registration vulnerable to cancellation when the applicant or registrant lacks such bona fide intent. Decisions in 2012 followed earlier decisions cancelling Section 1(b) registrations in holding that registrations under Sections 44(e) and 66(a) are subject to cancellation for non-use and for lack of bona fide intent to use. SaddleSprings, Inc. v. Mad Croc Brands Inc., 104 U.S.P.Q. 2d 1948 (T.T.A.B. 2012) and Sandro Andy S.A. v. Light, Inc., No. 12 Civ. 2392 (HB) (S.D.N.Y., Dec. 27, 2012).
In Sandro Andy, the court cited SaddleSprings for the holding that "the holder of the international registration shall have the same rights and remedies as the owner of a registration on the Principal Register" and is subject to cancellation "even if the international registration remains valid and subsisting." The district court found that the registration was cancellable in part for all goods regarding which the registrant admitted having no bona fide intention to use the mark in U.S. commerce at the time the application was filed, and ordered the registrant to delete from its registration all such goods. The court invited a future motion challenging the entire registration for the remaining goods were the registrant unable to come forward with evidence of such intent.
In a future motion challenging the remaining goods, the petitioner in Sandro Andy can readily establish a prima facie case of lack of bona fide intent through discovery responses. Spirits International B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 U.S.P.Q. 2d 1545 (T.T.A.B. 2011). In Spirits, the applicant stated that it had no documents regarding intended use, no promotional or marketing materials and no marketing plans. The opposer, having made its prima facie case through the applicant's discovery responses, shifted the burden to applicant to come forward with evidence that would explain or outweigh its failure to provide documentary support for its alleged intent. The applicant provided no such explanation and the board sustained the opposition on the ground of lack of bona fide intent. In L'Oreal S.A. v. Marcon, 102 U.S.P.Q. 2d 1434 (T.T.A.B. 2012), the board found that the evidence establishing bona fide intent or lack thereof must be objective and sustained the opposition because the applicant lacked documentation or other objective evidence of taking active steps toward use of its mark in the United States, which "outweigh[ed] any subjective (or even sworn) intent to use the mark."
These decisions involving total or partial cancellation for lack of a bona fide intent to use a mark have significant implications. The implications are potentially much greater for Section 44(e) and 66(a) applications and registrations than for those under Section 1(b). Section 1(b) applicants expect to use a mark in U.S. commerce before obtaining registration and might be more likely to possess documentation evidencing a bona fide intention to use. However, applicants under Sections 44(e) and 66(a) typically recite a very long list of goods and services, for which there is no use anywhere and likely no intended use and, therefore are unlikely to have documentation evidencing an intent to use a mark, much less an intent to use a mark in U.S. commerce at the time applications are filed. This raises the question: If by chance such an applicant has documentation showing intent to use the mark, but there is no statement as to the geographic scope of such intended use, will it suffice as evidence of intent to use a mark in U.S. commerce?
Inadequate documentation or objective evidence of a bona fide intent to use a mark in U.S. commerce could result in cancellation of Section 44(e) or 66(a) registrations because the mark did not exist at the time the application was filed, even though the registrant later possessed such evidence or began using the mark in the United States. Inability to produce documentary evidence of intended U.S. use before filing could also mean that trademark rights of foreign nationals might be much more circumscribed than many now believe. If a registration is cancelled for failure to produce objective or documentary evidence of a bona fide intent to use a mark in U.S. commerce, a Section 44(e), 44(d) or 66(a) registration will lose its constructive use priority created by the filing date and the owner will be required to rely on the date of its first use in U.S. commerce in any dispute involving a mark.
For Section 44(e) and 66(a) applications already filed, remedial actions are likely limited to locating and preserving any documentary evidence of bona fide intent. For such applications yet to be filed, there is clear learning from these recent decisions: locate — or create — and then retain, documentary evidence of a bona fide intention to use a mark in U.S. commerce before seeking U.S. registration.