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Apr
10

“Lack of Intent to Use” – An Increasingly Common Weapon in Trademark Cases

The number of successful attacks on trademark applications and registrations based on a “lack of intent to use” has been increasing in recent years.

Trademark owners often include as many products and services in their applications as possible, describing their products and services in various ways, and listing assorted products and services related to their primary offerings. While this approach is understandable, it may lead to serious consequences. If the trademark owner cannot demonstrate an intent to use the mark for the all of the products and services in the application, the application and any registration resulting from the application may be in jeopardy.

Intent to Use

Intent-to-use trademark applications must include a declaration indicating that the owner has a “bona fide” intent to use the mark in U.S. commerce for the products and services in the application. The same is true of trademark applications based on foreign applications, foreign registrations, and Madrid Protocol registrations. A bona fide intent to use a trademark is an intent to commercialize the products and services in the application, not merely an intent to “lock up” or otherwise reserve rights in the mark.

Lack of Intent to Use

The USPTO generally accepts a trademark owner’s declaration of intent to use a mark at face value during the application process. This is not the case in opposition and cancellation proceedings before the USPTO’s Trademark Trial and Appeal Board (“TTAB”). Third parties can attack applications and registrations in such proceedings on the ground that the trademark owner lacked an intent to use the mark when the application was initially filed.

The TTAB has held that ascertaining whether the necessary intent exists is an “objective determination based on all of the circumstances” of a particular case. There are no hard-and- fast rules regarding the type of evidence required. In practice, however, the most important factor in finding a “lack of intent to use” is often the failure to produce documentary evidence of such intent—i.e., documentary evidence beyond the intent stated in the application. Mere statements of an intent to use a mark are insufficient to prove the trademark owner’s intent.

If the trademark owner cannot show the existence of a bona fide intent to use the mark for all of the products and services in the application, the TTAB will void the application or cancel any registration resulting from the application. If the trademark owner fails to prove the requisite intent for some of the products and services in an application or registration, the TTAB will delete those products and services, and in certain situations, it may delete the entire class in question.

Lack of Intent to Use Cases

The following are some recent TTAB cases involving the “lack of intent to use” doctrine:

  • Research in Motion Limited v. NBOR Corporation, 92 USPQ 1926 (TTAB 2009) (lack of intent to use found where applicant produced no evidence of “product design efforts, manufacturing efforts, graphic design efforts, test marketing, correspondence with prospective licensees, preparation of marketing plans or business plans, creation of labels, marketing or promotional materials, and the like.” “The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof that is sufficient to prove that the applicant lacks a bona fide intent to use its mark in commerce.”).
  • The Saul Zaentz Company d/b/a Tolkien Enterprises v. Joseph M. Bumb, 95 USPQ2d 1723 (TTAB 2010) (lack of intent to use found where applicant did not produce any evidence of intent other than documents submitted in connection with the application and several domain name registrations).
  • Spirits International, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545 (TTAB 2011) (lack of intent to use found where applicant acknowledged it had no documents regarding its intent, such as promotional or marketing materials, and had not obtained any permits or approvals to import or sell the products covered by the application).
  • L’Oreal S.A. and L’Oreal USA, Inc. v. Robert Victor Marcon, 102 USPQ2d 1434 (TTAB 2012) (lack of intent to use found where applicant produced no documents evidencing the required intent; had no industry experience, partners, investors; and engaged in no concrete activities toward using the mark. Lack of documentation or other objective evidence “outweighs any subjective (or even sworn) intent to use the mark.”).
  • Swatch AG v. M.Z. Berger & Co., 108 USPQ2d 1463 (TTAB 2013) (lack of intent to use found where applicant only produced documents submitted in connection with the trademark application and internal documents showing the mark on mockups or renderings of a single product).

Implications

These and other “lack of intent to use” cases show that trademark owners may wish to consider documenting their steps to bring their products and services to market in certain circumstances, such as when their trademark applications cover long lists of products and services, many different types of products and services, or unique products or services. Trademark owners may have the requisite intent with regard to all of the products and services in their applications, but this may be irrelevant if evidence of such intent is unavailable.

Such evidence may include:

  1. Documents concerning the design, development, and manufacturing of the products or services;
  2. Documents concerning logos, advertising and promotional materials (including websites), and labeling and packaging for the products or services;
  3. Marketing plans or business plans concerning the products or services;
  4. Documents concerning marketing, advertising, and promotion of the products or services;
  5. Licensing and distribution agreements, and documents concerning the licensing and distribution of the products or services;
  6. Permits or approvals, and documents concerning permits or approvals required for the products or services;
  7. Invoices, purchase orders, and price quotes;
  8. Documents concerning, investor, partner, contractor, employment, and other relationships relating to the products or services; and
  9. Documents concerning the ability to offer the products and services.

There is no requirement that such evidence must be extensive. However, as the TTAB requires evidence relating to the mark shown in the application, it stands to reason that the evidence will be given most weight if it refers to the mark, not merely to the trademark owner’s products and services. Further, as the TTAB requires evidence relating to the use of the mark in U.S. commerce, evidence supplied by foreign applicant’s is likely to be considered most persuasive if it refers to the use of the mark in the United States, not merely to the use of the mark in the trademark owner’s home country.

As “lack of intent to use” claims have become an increasingly common weapon in trademark cases, trademark owners may need to memorialize the fact that they intend to use their marks to protect their rights.

About the author

Evan A. Raynes

Evan A. Raynes, JD, has over 15 years of intellectual property experience, with an emphasis on trademark counseling, prosecution, and litigation. He has broad experience in all aspects of trademark counseling and prosecution, including domestic and foreign trademark clearance, portfolio management, licensing, and audits. Evan has also counseled clients on numerous domain name, copyright, patent, false advertising, trade secret, right of publicity, social media, privacy, and data security issues. In addition to his prosecution and counseling experience, Evan has substantial experience in intellectual property litigation. He has worked on a wide range of trademark, unfair competition, copyright, patent, and trade secret cases, including large cases for industry-leading companies. He has appeared before federal courts at the district court and appellate levels, and has substantial experience handling opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. Evan also has substantial experience handling domain name disputes before the World Intellectual Property Organization. He has broad experience in electronic discovery in all types of intellectual property litigation. Prior to joining Symbus, Evan was a partner at the intellectual property law firm Finnegan, Henderson, Farabow, Garrett & Dunner and the general practice firm Roetzel & Andress.