Under the Lanham Act, specifically 15 U.S.C. §1051(b) a trademark applicant may apply for registration, even if they have not commenced use of the trademark in commerce. This provides the trademark applicant with a critical advantage. The applicant may use its filing date as a “constructive use” date for purposes of nationwide priority. See our post entitled What Constitutes Use In Commerce For A Service Mark? where we discuss how a trademark applicant can rely on their trademark filing date to establish priority. The trademark applicant must carefully document their bona fide intent. Most trademark applicants are not aware of this requirement and as a result, could have their application refused registration if challenged.
The party challenging the trademark applicant (the “opposer”) has the burden of demonstrating by a preponderance of the evidence that the applicant lacks the requisite intent to use the trademark in connection with the services or goods in commerce. See SmithKline Beecham Corp. v. Omnisource DDS LLC, 97 USPQ2d 1300 (TTAB 2010). If the trademark applicant cannot rebut the prima facie case, then summary judgment will be granted. The determination as to whether there is a bona fide intent to use the mark in commerce, is an objective one based on all the circumstances.
The Trademark Trial and Appeal Board (TTAB) recently determined that the trademark applicant did not satisfy its burden to come forward with documentary evidence of a bona fide intent to use the mark in commerce and granted the opposer’s motion for summary judgment. See PRL USA Holdings, Inc. v. Rich C. Young, Opposition No.91206846 (October 16, 2016) [not precedential]. In this case, the opposer was the owner of RALPH LAUREN POLO & Design and the trademark POLO. The trademark applicant filed for IRISH POLO CLUB USA & Design for shirts. Because the opposer was successful in showing that the applicant lacked a bona fide intent to use the mark, the TTAB did not have to determine the issues of likelihood of confusion and dilution. Generally, whether a trademark applicant possesses a bona fide intent to use the mark in commerce is not suitable for summary judgment disposition. However, if there is no genuine dispute of material fact as to the trademark applicant’s lack of intent to use the trademark as of the filing date, then the motion for summary judgment will be granted. In PRL USA Holdings, Inc., the opposer through its discovery requests demonstrated that the applicant could not produce any documents to support its mere allegations of intent.
Examples of supporting documentation of one’s intent to use the trademark in commerce with the goods or services identified in the trademark application would include: (1) licensing agreements, proposals or other correspondence to show negotiations between the trademark applicant and the prospective licensee; (2) documents to show steps taken in furtherance of manufacturing the goods; (3) marketing or promotional materials (a website showing the goods or services using the mark); (4) written proof of the steps taken to acquire governmental approval (such as an application for government approval); (5) artwork or packaging for the goods; (6) product or service research; or (7) customer purchase orders or invoices. The documents should make reference to the trademark and not just generally mention a class of goods or services.
The Board has repeatedly held that if the trademark applicant is unable to produce the goods identified in the trademark application, there is a lack of bona fide intent to use the trademark in commerce. See Swatch AG v. M.Z. Berger & Co., 108 USPQ2d 1463 (TTAB 2013) [precendential]. Therefore, trademark applicants need to take care in documenting their steps to bring their products to market and their services as well. Be ready to produce business plans, business meeting minutes, marketing plans, correspondence with suppliers and distributors, focus group testing, permits, licenses, etc. Lack of a bona fide intent to use the mark in commerce is becoming a popular ground for attack in opposition proceedings at the TTAB.
Alleging that there is a lack of intent is a powerful weapon in an opposer’s arsenal. If the trademark applicant is not prepared to prove its bona fide intent through documentary evidence, the applicant could lose its federal rights in the trademark and the priority filing date. A competitor interested in knocking out your trademark application could very well succeed, if you are not maintaining the appropriate documents. We counsel our clients to maintain the appropriate documentary support when filing an intent-to-use trademark application with the USPTO. Kindly contact our New York trademark attorneys, if you have any questions pertaining to your intent-to-use trademark application. We will be happy to assist you with your federal trademark application, or with another trademark matter.