Over the past two years, the United States Patent and Trademark Office (“USPTO”) has taken an increasingly aggressive stance toward allegations in applications to register marks that the applicants have a bona fide intent to use their marks in connection with the goods and services recited in the applications. In L.C. Licensing, Inc. v. Berman, 86 U.S.P.Q.2d 1883 (T.T.A.B. 2008), for example, the Trademark Trial and Appeal Board invalidated an application on the ground that “[t]he mere assertion of an intent to use the mark without corroboration of any sort, whether documentary or otherwise, is not likely to provide cred­ible evidence to establish a bona fide intention to use the mark,” id. at 1889, and this outcome was followed by another holding to similar effect five and a half months later. See Boston Red Sox Baseball Club LP v. Sherman, 88 U.S.P.Q.2d 1581 (T.T.A.B. 2008). Although these decisions are certainly important, their long-term significance may eventually be overshadowed by the Board’s recent precedential opinion in Honda Motor Co. v. Winkelmann, Opposition No. 91170552, slip op. (T.T.A.B. April 8, 2009), which confirmed that non-U.S. applicants alleging a bona fide intent to use their marks in the United States are held to the same standards as their domestic counterparts. The decision therefore promises to have a dramatic effect on “in-bound” U.S. trademark prosecution practice.

Among the prerequisites for registration of a mark with the USPTO is the requirement that an applicant identify one or more “bases” for its application. There are five such bases available, the last three of which are available only to applicants domiciled outside of the United States:

  1. Under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a), the applicant may recite that it has actually used its mark in commerce in the United States in connection with each good or service covered by the application. An applicant claiming this basis must submit specimens showing use of the mark with at least one good or service in each International Class covered by the application and must also identify the date on which the mark was first used in commerce in that Class.
  1. Under Section 1(b) of the Lanham Act, id.§ 1051(b), the applicant may recite that it has a bona fide intent to use the mark in commerce in the United States in connection with the goods or services covered by the application. Before an application claiming only this basis can mature into a registration, the applicant must aver under oath that the mark is being used in connection with each good or service covered by the application and provide specimens and dates of first use for each International Class covered by the application.
  1. Under Section 44(d) of the Lanham Act, id. § 1126(d), the applicant may recite that, within six months of the filing of its U.S. application, it previously applied to register the same mark for the same goods or services in a country that is a member of the Paris Convention. This basis also requires the applicant to recite that it has a bona fide intent to use the mark in commerce in the United States in connection with the goods or services covered by the application. Nevertheless, the applicant can secure a registration of its mark without a showing of actual use by submitting a certified copy of the non-U.S. registration once it issues.
  1. Under Section 44(e) of the Lanham Act, id. § 1126(e), the applicant may recite that it already owns a registration of the same mark issued by a country that is a member of the Paris Convention. This basis also requires the applicant to recite that it has a bona fide intent to use the mark in commerce in the United States in connection with the goods or services covered by the application. As is the case with an applicant claiming a Section 44(d) basis, however, the applicant can secure a registration of its mark without a showing of actual use by submitting a certified copy of the non-U.S. registration.
  1. Under Section 66(a) of the Lanham Act, id. § 1141f(a), an applicant domiciled outside the United States but in a country that is a member of the Madrid Protocol may recite that it owns a registration of, or application to register, the same mark for the same goods or services in its home country. This basis also requires the applicant to recite that it has a bona fide intent to use the mark in connection with the goods or services covered by the application. As is the case with an applicant claiming a Section 44(d) or Section 44(e) basis, however, the applicant can secure a registration of its mark without a showing of actual use by submitting a certified copy of the non-U.S. registration.

In Honda Motor, the Board was confronted with a challenge to an application filed by a German national under Section 44(e) and based on a prior German registration of the same mark. Although the validity of the prior registration was apparently undisputed, the opposer averred that the applicant’s discovery responses established his lack of a bona fide intent to use his mark with the claimed goods, which included “vehicles for transportation,” as of the application’s filing date, which is a necessary component of a claimed Section 44(e) basis. In response to the opposer’s motion for summary judgment, the applicant submitted declaration testimony from third parties, foreign registrations of the same mark, and website printouts featuring the mark.

The Board granted the opposer’s motion for summary judgment. It first noted that “[t]o raise a genuine issue of material fact, applicant must rely on specific facts that establish the existence of an ability and willingness to use the mark in the United States to identify its claimed [goods] at the time of the filing of the application.” Slip op. at 10. Reviewing the applicant’s showing, the Board concluded that it was deficient for two reasons. First, it established only the applicant’s intent to use the mark in connection with “car care packages or promotional material, not the vehicles themselves.” More importantly, because the materials submitted by the applicant were of foreign origin, “these documents do not show that [the] applicant has an intent to use the mark in the United States.” Id. at 11 (emphasis added).

Because a non-U.S. domiciliary with a prior foreign trademark filing can secure a U.S. registration without demonstrating actual use of its mark in commerce in the United States, it is tempting for applicants asserting Section 44(d), Section 44(e), or Section 66(a) bases to overlook the requirement that these bases require the same intent to use an applied-for mark as does a Section 1(b) basis. Indeed, applications relying on prior foreign filings in civil law jurisdictions in particular often cover a wide variety of incongruous goods and services that, as a practical matter, are unlikely to be sold under the same mark. As Honda Motor confirms, however, the absence of contemporary documentation of an applicant’s bona fide intent to use an applied-for mark in the United States for each of the goods or services covered by the application can turn such an overreaching filing strategy into a liability.