New Precedential TTAB Decision Requires Credible Evidence to Support Bona Fide Intent To Use Mark In The U.S.
By: DEAN R. KARAU
An article in the May 2007 issue of Trademark TopicsSM discussed a Trademark Trial and Appeal Board case of first impression, Intel Corp. v. Emeny, Opposition No. 91,123,312 (T.T.A.B. 2007). While not citable as precedent, the T.T.A.B. sustained an opposition in part because the applicant could not establish that it had a bona fide intent to use its mark with the goods listed in its application. (See Be Sure You Can Establish Your Bona Fides When You Say You Intend to Use Your Mark In The U.S. – Or Suffer The Consequences.)
On March 28, 2008, the T.T.A.B. reached the same conclusion, but this time in a precedential decision.
In L.C. Licensing, Inc. v. Berman, Opposition No. 91,162,330 (T.T.A.B. March 28, 2008), the applicant, Mr. Berman, filed an application for ENYCE for use on custom automobile accessories. L.C. Licensing alleged, among other things, that Mr. Berman could not support his claim of a bona fide intention to use his mark on auto accessories.
The Board began by identifying the standard it would apply, from Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (T.T.A.B 1993), which held that
absent other facts which adequately explain or outweigh the failure of an applicant to have any documents supportive of or bearing upon its claimed intent to use its mark in commerce, the absence of documentary evidence on the part of an applicant regarding such intent is sufficient to prove that the applicant lacks a bona fide intention to use the mark in commerce as required by Section 1(b).
In discovery, Mr. Berman admitted that he had no documents to support his assertion that he intended to use his mark with auto accessories. Mr. Berman’s deposition testimony offered no facts which explained or outweighed his failure to have any documents supporting his alleged intent and, according to the T.T.A.B.,
[t]he mere assertion of an intent to use the mark without corroboration of any sort, whether documentary or otherwise, is not likely to provide credible evidence to establish a bona fide intention to use the mark.
The T.T.A.B. concluded that Mr. Berman did not have the requisite bona fide intention to use his mark when he filed his application, and sustained the opposition on this ground.
This case mandates that trademark attorneys inquire more vigorously into their clients’ actual intention to use their marks on all of the goods and services in the application. In addition, attorneys must advise clients about the need for documentary evidence supporting the intention to use a mark with the goods/services in the application. Attorneys should recommend that their clients place the evidence, or a list of where the evidence resides, in the clients’ trademark file, in the event of a dispute downstream.
In addition, U.S. applications based on non-U.S. applications or registrations can be problematic, whether based on an application or registration issued from another country, or based on a request for the extension of protection to the U.S. of an International Registration. In either case, the applicant must declare a bona fide intention to use the mark in U.S. commerce with the identified goods or services.
Thus any U.S. applicant relying on a non-U.S. application or registration must be careful when submitting a “laundry list” of goods/services in connection with an intent-to-use application, an application based on a foreign registration or an application based on an International Registration. The applicant must be careful to have “objective” evidence, preferably in the form of documents, establishing the applicant’s bona fide intent to use its mark in the U.S. in connection with all of its goods and services. Otherwise, its application – or even its later-issued registration – could be subject to a successful challenge.
Of course, this new T.T.A.B. case will provide trademark litigators with additional interrogatories and document requests aimed at ferreting out the existence, or lack thereof, of a credible intention to use the mark in the U.S. with all of the goods/services in the U.S. application.
Once again, the T.T.A.B. is making it clear that applicants and their attorneys must take care when preparing and filing trademark applications or risk the consequences.