“Intent to Use” and US Trademark Filing Based on Foreign Registration

9 Oct 2017 , 6:10pm

Vigilance in maintaining records that demonstrate an intent to use the mark in US commerce is key in the face of trademark challengers, says Ben Natter and Alex Callo of Haug Partners.

Filing a US trademark registration

There are five bases for filing an application for a registration of a trademark in the US: (1) use of a mark in commerce under Section 1(a) of the Lanham Act;1 (2) bona fide intention to use a mark in commerce under Section 1(b) of the Lanham Act;2 (3) a claim of priority based on an earlier-filed foreign application under Section 44(d) of the Lanham Act;3 (4) ownership of a registration of the mark in a foreign country under Section 44(e) of the Lanham Act;4 and (5) extension of protection of an international registration to the U.S. under Section 66(a) of the Lanham Act5 (also known as the Madrid Protocol).6

Bona fide intent

Like Section 1(b) filers, US applicants filing based on a foreign registration under Sections 44 or 66 must disclose in their application a bona fide “state[ment]” or “declaration” that the applicant has a “bona fide intention to use the mark in commerce” in the U.S.7 An actual lack of bona fide intent to use the mark in commerce (at the time of filing) is proper statutory grounds on which a party may challenge the validity of another’s trademark or trademark application.8 Furthermore, whether an applicant possesses a bona fide intention to use the mark in commerce according to Sections 1(b), 44, or 66 is determined using the same standards for all three sections.9

Documentary evidence

Foreign trademark applicants filing based on a bona fide intent to use a mark in the US should retain documentary evidence of an intent to use the mark in commerce in order to prepare themselves for a potential challenge to their trademark or trademark application. For example, in M.Z. Berger, the Federal Circuit deliberated whether the trademark applicant (“Berger”) possessed enough evidence to demonstrate the requisite intent to use the trademark in commerce.10 Viewed in isolation, the Federal Circuit found that Berger possessed some evidence that “could perhaps lead a reasonable fact-finder to conclude there was bona fide intent.”11

Totality of the circumstances

However, the Court held that “whether an applicant ha[s] a ‘bona fide intent’ to use the mark in commerce at the time of the application requires objective evidence of intent,” which takes into account “the totality of the circumstances.”12 The Federal Circuit in this case consequently found that conflicting testimony evidencing intent and documentary evidence that “relate[s] only to the prosecution of the trademark application” were insufficient to demonstrate a bona fide intent to use.13 Therefore, “viewing the evidence as a whole,” the Court found substantial evidence to support the TTAB’s conclusion of no bona fide intent to use, thus cancelling Berger’s trademark application.14 Relatedly, the Federal Circuit held that an “applicant’s intent to use the mark” may “not merely [be an] intent to reserve a right in the mark.”15

M.Z.Berger standards

While M.Z. Berger relates to a trademark applicant filing under Section 1(b) of the Lanham Act, applicants filing based on a foreign registration under Sections 44 or 66 should take note of the standards for bona fide intent to use as articulated by the Federal Circuit in M.Z. Berger. For example, the TTAB recently relied on M.Z. Berger in determining whether a Section 66 applicant demonstrated a bona fide intent to use a mark in commerce.16 In Combe, the TTAB noted the following: (i) evidence of the applicant’s ability to market/manufacture the identified goods in the US; (ii) a meeting with the applicant and a US company to discuss distributing the identified goods in the US; and (iii) that the applicant had the ability to manufacture and market the identified goods and “had demonstrated the ability to export the products into other countries to set the stage for its expansion into the U.S. market.”17 This evidence led the TTAB to find that the applicant did not merely intend to reserve a right in the mark, and the TTAB therefore held that the applicant satisfied the objective intent standard articulated by M.Z. Berger.18

Inadequate objective evidence can lead to cancellation

Since inadequate objective evidence of a bona fide intent to use a mark in commerce may result in the cancellation of Section 44 or 66 registrations, applicants should remain vigilant in maintaining records that demonstrate an intent to use the mark in US commerce. Otherwise, such marks may be vulnerable to an increasingly popular strategy for trademark challengers.

 


1 15 U.S.C. § 1051(a).

2 15 U.S.C. § 1051(b).

3 15 U.S.C. § 1126(d).

4 15 U.S.C. § 1126(e).

5 15 U.S.C. § 1141f.

6 Trademark Manual of Examining Procedure (TMEP) § 806.

7 15 U.S.C. §§ 1126(e), 1141f(a).

8 See, e.g., M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1375 (Fed. Cir. 2015); Aktieselskabet AF 21 November 2001 v. Fame Jeans Inc., 525 F.3d 8, 21 (D.C. Cir. 2008); Koninkijke Philips Elecs. N.V. v. Hunt Control Sys., No. 11-3684 (SRC)(CLW), 2016 U.S. Dist. LEXIS 84299, at *33 (D.N.J. June 29, 2016).

9 See, e.g., Kelly Servs. v. Creative Harbor, LLC, 140 F. Supp. 3d 611, 620-21 (E.D. Mi. 2015); Sandro Andy, S.A. v. Light Inc., No. 12 Civ. 2392 (HB), 2012 U.S. Dist. LEXIS 182401, at *5 (S.D.N.Y. Dec. 27, 2012).

10 M.Z. Berger, 787 F.3d at 1370.

11 Id. at 1376.

12 Id.

13 Id. at 1377.

14 Id.

15 Id. at 1376 (citation omitted).

16 Combe Incorporated v. Dr. August Wolff GmbH, No. 91209708, 2017 TTAB LEXIS 200, at *42 (T.T.A.B. June 19, 2017).

17 Id. at *50

18 Id.