<p>The <em>Honda</em> case involved an opposition by Honda to an application to register VIC for &ldquo;vehicles for transportation on land, air or water&rdquo; and related goods, including &ldquo;glider aircraft.&rdquo; The Trademark Office cited the <em>Commodore</em> precedent discussed above: the failure of an applicant to provide any documentary evidence to demonstrate its bona fide intent to use a mark can be raised by an opposer as sufficient to prove the applicant lacked such an intent, unless other facts are presented that adequately explain or outweigh such failure.</p> <p>The applicant in this case repeatedly responded to various relevant discovery requests that &ldquo;no such documents exist.&rdquo; Applicant did provide copies of its European trademark registrations and untranslated printouts in German from its website. However, the Trademark Office found that none of these documents provided any evidence of a bona fide intent to use the mark in US commerce with the goods in question.</p> <p>More importantly, however, the Trademark Office for the first time stated that to raise a genuine issue of material fact as to its intent on a motion for summary judgment, an applicant must rely on specific facts that establish the &ldquo;existence of an <em><u>ability</u></em> and willingness to use the mark in the United States to identify [the goods in the application] at the time of the filing of the application.&rdquo; This is apparently the first time the Trademark Office has expressly stated that a demonstrated ability to use the mark (presumably at some reasonable time in the future) is required by the statutory standard of &ldquo;circumstances showing good faith.&rdquo; In Honda, the applicant made no such showing, and the application was dismissed on summary judgment.</p> <p>The Honda case was followed just a few months later by <em>DC Comics and Marvel Characters, Inc. v. Michael Silver</em>,7 in which the Trademark Office granted a motion for summary judgment denying an application for SUPER HERO for various skin care products. The Office repeated the new Honda standard of the need for an applicant to be able to demonstrate a willingness <em><u>and ability</u></em> to use the mark. Here, the applicant&rsquo;s claim that he was an educated entrepreneur with a history of product development and licensing was not deemed sufficient.</p> <p>However, just a few months later, the Trademark Office sidestepped the opportunity to reinforce the applicability of the <em>Honda</em> &ldquo;willingness and ability&rdquo; standard. Specifically, it found that an applicant lacked a bona fide intent to use the mark BLACK MAIL for software for email and related uses. However, the Trademark Office did <em><u>not</u></em> specifically refer to the <em>Honda</em> standard requiring proof of a willingness and ability to use the mark, but noted that the applicant had already filed two applications for the same mark that were abandoned due to failure to file a Statement of Use, and the applicant failed to produce in discovery any documentary evidence substantiating its alleged bona fide intent to use the mark.8</p> <p>Similarly, in early 2010, in a nonprecedential opinion the Trademark Office again dodged repeating the Honda &ldquo;willingness and ability&rdquo; standard in finding that Edgar Rice Burroughs, Inc. did have a bona fide intent to use a mark with a wide variety of toys, primarily due to its prior movie and merchandising license with Disney for the mark and the parties&rsquo; history of similar collaboration with respect to the TARZAN mark.9 Although the case cites Honda, it does so only regarding the summary judgment standard and not for the requirement to prove a willingness and ability to use the mark, instead citing the 1994 case of <em>Lane Ltd. v. Jackson International Trading Co</em>. that a bona fide intent is to be determined according to &ldquo;all of the circumstances.&rdquo; Whether these two most recent cases reflect a deliberate effort by the Trademark Office to step back from the &ldquo;willingness and ability&rdquo; standard set forth in Honda is unknown. Until the issue is addressed directly, the Honda standard remains the law.</p>