Applications for registration of a trademark in the United States can be filed based on current use of the trademark in commerce or based on an applicant’s intent to use the mark. Applicants who file based on an intent to use a trademark must state under penalty of perjury that they have a bona fide intent to use the trademark in the United States in connection with every product or service listed in the application.
In recent years, the United States Patent and Trademark Office has construed the bona fide intent requirement more strictly than has traditionally been the case. In Honda Motor Co. v. Winkelmann, 90 U.S.P.Q.2d (BNA) 1660 (TTAB 2009), the Trademark Trial and Appeal Board (“TTAB”) sustained Honda’s opposition to Winkelmann’s application on the basis that Winkelmann had failed to establish that he had the a bona fide intent to use the mark in the United States. Honda, which owns the mark “CIVIC”, opposed Winkelmann’s intentto- use application for the mark “V.I.C.” for use in connection with vehicles. During discovery, Honda asked Winkelmann to produce evidence of his intent to use the mark in the U.S., such as a business plan. When Winkelmann failed to produce any documents, Honda moved for summary judgment on the basis that Winkelmann lacked the required bona fide intent to use the mark in the United States at the time he filed the application. In response, Winkelmann argued that his bona fide intent was demonstrated by his prior use and registration of the mark in Europe and by the mere fact that he had filed a trademark application in the United States. Winkelmann also submitted pages from a German website for what appeared to be car care products called “MTW V.I.C.” The TTAB granted Honda’s motion for summary judgment because Winkelmann did not provide any objective proof that he had a bona fide intent to use the mark in the United States at the time he filed the application. The TTAB explained that the foreign registrations and the mere act of filing a United States application did not prove that Winkelmann had the necessary intent to use the mark in this country. It further noted that the German web pages might establish Winkelmann’s intent to use the mark in connection with car care packages, but not with the vehicles claimed in the U.S. application. Also, since the web pages were in German, they did not demonstrate any intent to use the mark in the United States.
In light of Honda and other recent TTAB decisions in which applications were found void due to the applicant’s lack of bona fide intent to use the applied-for mark, it seems likely that parties who file trademark oppositions will use this line of attack with greater frequency.
Trademark owners thus should take the following measures to lower the risk that their intent-to-use applications will be vulnerable to such attacks. First, when filing intent-touse applications in the United States, applicants should include only those products and services they actually intend to provide under the proposed trademark. In addition, applicants should preserve records that can help demonstrate bona fide intent, such as business plans, memos, communications with prospective licensees, applications for regulatory permits, documents concerning test marketing, domain name registrations, and drafts of labels and packaging.