Parties seeking to obtain a federal trademark registration for a mark not yet in use must submit a declaration attesting to their “bona fide intent to use” that mark in the future. In the past, some applicants may have taken that requirement lightly. Recent decisions from the Trademark Trial and Appeal Board (TTAB), however, make clear that the declaration of a bona fide intent to use is not an empty formality. It is a substantive obligation that must be supported by documentary evidence. Failure to produce documentary evidence of an intent to use at or before the filing date will, in itself, likely be sufficient to warrant rejection of the application.
In Research in Motion Limited v. NBOR Corporation, Opposition No. 91179284 (12/2/09), the TTAB granted summary judgment rejecting an application, based on intent to use (ITU), to register the mark BLACK MAIL for computer software for facilitating interactive communication. The owner of the trademark BLACKBERRY opposed the application on the ground of likely confusion. In response to the opposer's discovery requests, the applicant indicated that it had no plans about how the mark would be used, no projected date of first use, and no determination of the channels of trade, geographic areas of sales, or classes of intended consumers. The applicant produced no documents evidencing any intent to use the mark. The applicant did, however, identify documents pertaining to earlier ITU applications to register the same mark for the same goods.
The opposer amended its opposition to add the ground of lack of bona fide intent to use, and moved for summary judgment. The TTAB granted the motion solely on the ground of lack of intent to use. Relying on Commodore Electronics Ltd. V. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993), the TTAB held that “(t)he absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof that is sufficient to prove that the applicant lacks a bona fide intent to use its mark in commerce.” Here, the applicant could show no “product design efforts, manufacturing efforts, graphic design efforts, test marketing, correspondence with prospective licensees, preparation of marketing plans or business plans, creation of labels, marketing or promotional materials, and the like.” And the filing of two prior ITU applications for the same mark cut against the applicant. The TTAB pointed to the legislative history of the intent to use provisions of the Trademark Act, which identified the repeated filing and abandonment of ITU applications due to lack of use as a circumstance that would “cast doubt on the bona fide nature of the intent or even disprove it entirely.” S. Rep. No. 100-515 at 23-25 (1988).
A second recent case shows that the obligation to produce documentary evidence of intent to use applies even where the application is based solely on a foreign registration. Honda Motor Co., Ltd. v. Friedrich Winkelman, Opposition No. 91170552 (4/8/09). Again, the applicant produced no “current business plans, ongoing discussions, promotional activities, or anything else” to corroborate his alleged intent to use. His ownership of foreign trademark registrations and scant evidence of some use in Europe was held insufficient since these facts had nothing to do with any intent to use the marks in the United States. Summary judgment was granted to the opposer in this case as well.
These cases lay out a road map for discovery in oppositions to ITU applications. Opposers should always serve discovery directed to this issue. If the applicant produces little or nothing, the TTAB will be receptive to motions for summary judgment. An opposer must remember, however, to amend its notice of opposition beforehand, if this ground was not pleaded at the outset. On the other hand, those applying to register based on intent to use should make sure that they have in their files some documentary evidence of their intent to use the mark. A mere statement of subjective intention will not be enough.