Unlike the vast majority of jurisdictions around the world, under the US Trademark Act, only someone “who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register.” Over the last year, the United States Trademark Trial and Appeal Board (TTAB) has issued two precedential decisions emphasizing this requirement and sustaining oppositions lodged against trademark applications based on a lack of bona fide intent to use the opposed mark in US commerce.
In the first decision, Swatch AG v. M.Z. Berger & Co. Inc., 108 U.S.P.Q. 2d 1463 (T.T.A.B. 2013), a family-owned watchmaker and retailer based in New York filed an intent-to-use application to register the mark IWATCH for watches and clocks. Well-known watch manufacturer and retailer Swatch opposed the application, citing likelihood of confusion and lack of bona fide intent to use the mark in US commerce. The TTAB sustained Swatch’s opposition, citing a lack of bona fide intent to use the mark in commerce.
Although the TTAB clarified that neither the controlling US statute (the Lanham Act) nor the TTAB’s previous decisions have required the contemporaneousness of an applicant’s documentary evidence in support of an intent-to-use application, the TTAB stressed the importance of presenting documentation showing a clear plan to develop products covered under the applied for mark: the “inquiry is not into applicant’s subjective state of mind alone. Rather, evidence of circumstances bearing on intent ‘is “objective” in the sense that it is evidence in the form of real life facts and by the actions of the applicant, not by the applicant’s testimony as to its subjective state of mind.” Swatch, 108 U.S.P.Q. 2d at 1471. In other words, an opposer establishes a prima facie case for lack of bona fide intent to use a mark when it can show that the applicant does not have any such documentation evidencing steps to use the mark in US commerce.
Similarly, in Lincoln National Corporation v. Kent G. Anderson, 110 U.S.P.Q. 2d 1271 (T.T.A.B. 2014) (made precedential Mar. 26, 2014), the TTAB noted that to survive an opposition challenge, an intent-to-use applicant must do more than merely reserve a right to the future use of a mark. The applicant, an individual, filed an intent-to-use application for the mark FUTURE under several classes, including the challenged Classes 35 and 36.
In sustaining the opposition challenge to the applicant’s mark, the TTAB reviewed deposition testimony, correspondence between the applicant and third parties on licensing and business development, the applicant’s website, expenditures relating to the mark and claimed projects. The documents suggested the applicant had been unsuccessful in finding partners or licensees and lacked the capacity to use the mark on his own. Indeed, the TTAB found the “applicant’s idealistic hopes for forming a futuristic company based on his FUTURE mark . . . do not suffice as the requisite Section 1(b) specific bona fide intention to use the mark in commerce . . . .” Lincoln Nat’l, 110 U.S.P.Q. 2d at 1277.
As a result, the TTAB found the applicant could not have a realistic intent to use the mark in the challenged classes. Notably, the TTAB did not touch on the applicant’s intent-to-use applications under the unopposed classes, narrowing the precedential value of the decision to applications facing opposition challenges only.
These decisions suggest five steps trademark applicants may wish to consider to protect themselves against opposition challenges based on lack of bona fide intent-to-use:
- Clearly state your purpose
An intent-to-use based application will have difficulty surviving an opposition challenge if the applicant’s intended use for the mark is nebulous or overly broad. Both applicants in the cited cases expressed overly broad intents-to-use the proposed marks; their intents seemed theoretical at best. Clarity is key. Have a plan that can be clearly communicated to an outsider.
- Develop the vision early
While documents supporting intent-to-use applications do not need to be contemporaneous, it is a good idea to begin developing plans for your mark as soon as possible. TTAB determinations in opposition challenges focus on the applicant’s intent at the time of filing. The sooner an applicant can document its intent in the application process, the better.
- Maintain thorough and clear records
The TTAB has shown it will review all relevant documentation to determine whether the applicant actually intended to use the mark at the time of filing. This includes, and is not limited to, emails, letters, expenditures, business plans, product development plans and licensing agreements.
- Be consistent
In the cited cases, inconsistency in the applicants’ visions contributed to the TTAB’s decisions. Adapting a business plan for the products and services covered under a mark is acceptable and natural; however, it is important to then take practical steps to execute that vision.
- Use social media and the Internet wisely
It is essential to control the information you disperse online. Present a clear, unified message and take care not to communicate information that detracts from the intent-to-use basis of your application.