Lanham Act. District court directs foreign trademark owner to amend its overly broad registration of a trademark under the Madrid Protocol because the owner could not show a bona fide intent to use the mark in connection with each and every good listed in the registration.
Plaintiff Sandro Andy, S.A. ("Sandro Andy"), a French company, filed a lawsuit to enforce its U.S. registration for the mark SANDRO. Sandro Andy sells clothing in the U.S., but its registration listed over 250 items in several classes. Sandro had applied for U.S. registration of the mark by requesting extension of protection to the United States of an International Registration issued by the World Intellectual Property Organization under Lanham Act § 66 (the "Madrid Protocol"). A request for an extension of protection under § 66 must include "a declaration of bona fide intention to use the mark in commerce."
Defendant counterclaimed, seeking a declaration that Sandro Andy lacked a bona fide intent to use the mark in connection with each and every good listed in the registration and requesting cancellation of the SANDRO registration in its entirety. Plaintiff moved to dismiss the counterclaim, which motion was denied. The court found that Sandro Andy's registration was overbroad, but declined to invalidate the entire registration. Instead, the court directed Sandro Andy to "amend its International Registration and to cull from the list the unused goods and classes." In the alternative, the court stated that Sandro Andy may file a motion to amend its certificate of extension. The court noted that a lack of bona fide intent for some but not all goods is not necessarily a reason to deem the entire registration invalid.