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Intent To Use - It’s Not The Thought That Counts




by:
Edwin Komen
Sheppard, Mullin, Richter & Hampton LLP - Washington Office

 
April 23, 2014

Previously published on April 10, 2014

Bona fide intent, the sine qua non of non-use trademark applications, was given new meaning by the TTAB in a decision released unpublished February 21, 2014 but redesignated as precedent on March 26, 2014, thus placing at risk similar applications for oppositions and issued registrations for cancellation. The decision, Lincoln National Corporation v. Anderson, Consolidated Opposition Nos. 91192939 and 91194817, TTAB Mailed February 21, 2014[1], exemplifies an apparent trend of the TTAB requiring greater proof of an applicant’s “intent” as a jurisdictional prerequisite for filing or face a finding that the application is void ab initio. This finding may result from an opposition but, perhaps more significantly, from a cancellation many years following registration.

The Trademark Law Revision Act of 1988[2], effective November 16, 1989 (“TLRA”), introduced the concept, then alien to U.S. trademark law, of “intent to use” as a filing basis under Section 1(b) of the Trademark Act. Prior to that time, only owners of foreign applications were entitled to file without showing use under Section 44(d) and only then entitled to registration in the U.S. under Section 44 (e) following issuance of the foreign registration itself. In order to avoid frivolous applications filed merely to tie up names on the public records, the TLRA also introduced the requirement that such “intent” be “bona fide” to use the mark “in commerce” and “under circumstances showing the good faith of such person.” The section 45 definition of “use in commerce” reinforces the need for an objective manifestation of “intent” by providing, “The term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”

The requirement of a “bona fide intent,” however, is not confined to trademark applications filed under Section 1(b). The same requirement is found in Section 44(d)(2) for applications based on foreign trademark filings and in Section 66(a) as a requirement for extension of U.S. protection to an international registration under the Madrid Protocol. In other words, failure of proof of a bona fide intent can be used as a basis for opposing or cancelling any U.S. trademark application or registration regardless of the filing basis.

In the Lincoln National case, the applicant, Kent G. Anderson, had filed two applications covering what the TTAB found was a “plethora” of goods and services that was “exceedingly long, repetitive and confusing” spread across 11 international classes in the first application and 8 classes in the second.[3] The legislative history of the TLRA, as noted by the TTAB, describes, as an objective example casting doubt on “intent,” “an excessive number of intent-to-use applications in relation to the number of products the applicant is likely to introduce under the applied-for marks during the pendency of the applications.” The TTAB found that multi-class applications were functionally the same for this purpose so that “Our finding that the the above-quoted TLRA legislative history supports a finding of no bona fide intent in this case is based on the sheer number and diverse scope of the goods and services identified in applicant’s eleven-class application as a whole...”[4] so that Anderson’s applications were both found void ab initio.

Ironically, Anderson’s applications were for the mark FUTURE. However, the TTAB was unimpressed with Anderson’s vague testimony about his “future” intent since it was “highly unlikely that the applicant would be able to introduce these services during the pendency of his intent-to-use application.”[5] The TTAB found support for this finding in applicant’s discovery testimony that he was an unemployed/self-employed security guard, studied criminal justice at the Bismarck (North Dakota) Community College where he took “some business classes,” was not certified or licensed to offer many of the application services, and, moreover, “I don’t manufacture products, because I never could find the resources to do that.”

Lincoln National could potentially be viewed as confined to its facts since the TTAB also sustained the consolidated oppositions based on the likelihood of confusion of Anderson’s FUTURE mark with Lincoln’s previously registered HELLO FUTURE. However, given the delayed decision making the case a precedent, we can infer the TTAB’s “intent” to serve Lincoln National as a warning to those who file overly broad and all-encompassing applications based on intent-to-use. Such “intent” will seemingly be held to a high level of scrutiny especially under circumstances where the sheer number of goods and services seems disproportionate to either the capacity of the applicant to produce or render such goods and services or such goods and services fall well beyond the historic range of the applicant’s business. This would seemingly make many foreign based filings highly vulnerable to “intent” based oppositions or cancellations since section 44(d), 44(e) and 66 filings are often based on exactly the same broad wording in the foreign registrations originating in countries that permit such expansive filings. This, in turn, suggests that U.S. attorneys acting on behalf of foreign applicants, as well as overly ambitious U.S. applicants, should caution against broadly worded goods and services unless the applicant can clearly and objectively document the “bona fide intent” necessary to avoid potential challenges and TTAB scrutiny.

 

[1] Decision attached.

[2] Public Law 100-667, November 16, 1988, 102 Stat. 2925, 100th Cong.

[3] Copies of the applications found in the PTO’s TESS database are attached.

[4] The TTAB applied the same reasoning to invalidate applicant’s eight-class application.

[5] Applicant testified, when asked, that his prospective customers were “The world. Every person in the world. I’m trying to do that, but that’s for the future plan.”



 

The views expressed in this document are solely the views of the author and not Martindale-Hubbell. This document is intended for informational purposes only and is not legal advice or a substitute for consultation with a licensed legal professional in a particular case or circumstance.
 

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Author
 
Edwin Komen
Practice Area
 
Intellectual Property
 
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