Evidence Needed to Prove Bona Fide Intent to Use

The TTAB has opined on the meaning of a bona fide intent to use a trademark in connection with a Section 1b intent to use trademark application. None of these opinions, however, has delineated a clear bright-line test defining bona fide intent to use. In April 2009, the TTAB, ruling in Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) [precedential], established the meaning in the context of a trademark application based on foreign registration rights under Section 44, rather than on use in interstate U.S. commerce. The TTAB looked for clear objective proof of a bona fide intent, rather than subjective assertions, in the face of an opposition proceeding.

The Trademark Act requires that an application be based either on use (Section 1a) or a bona fide intent to use (Section 1b), as recited in the application. Applications that rely on foreign applications (Section 44d) or registrations (Section 44e) or on the Madrid Protocol (Section 66a) also must include a verified statement that the applicant has a bona fide intent to use the mark in U.S. commerce.

Honda's Opposition

In the Honda case, a German national applied to register “V.I.C.” for “vehicles for transportation” based upon a German registration under Section 44e. Honda opposed the application initially based on a likelihood of confusion with its mark “CIVIC” for automobiles and structural parts for automobiles. It later amended its opposition to include the argument that Winkelmann “lacked the requisite bona fide intent to use the mark in [U.S.] commerce at the time of filing his application.” Honda cited as support for its argument, Winkelmann's responses to interrogatories and document requests. Winkelmann admitted that it “has not had activities in the U.S. and has not made or employed a business plan, strategy, arrangements or methods there” and “has not identified channels of trade that will be used in the United States.” Honda “conclude[d] that the absence of any other documentary evidence, prepared, created or produced prior to the filing date of the application or subsequent thereto, demonstrates [A]pplicant's lack of the requisite bona fide intent at the time of filing, rendering the application void ab initio.” Honda requested summary judgment as a matter of law.

An Issue for Summary Judgment?

Exploring whether the question of an applicant's bona fide intent to use is a question of fact or law appropriate for summary judgment, the TTAB noted that while “the factual question of intent is particularly unsuited to disposition on summary judgment ' the absence of any documentary evidence regarding an applicant's bona fide intention to use a mark in commerce is sufficient to prove that an applicant lacks such intention as required by Section 1b of the Trademark Act unless other facts are presented which adequately explain or outweigh ' [the] failure to provide such documentary evidence.” The TTAB cited here to Commodore Electronics Ltd v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993) (while Congress did not define “bona fide” intent to use, the legislative history of the Trademark Law Revision Act suggests a need for objective evidence).

Winkelmann fought Honda's motion, countering that his registration and use of the mark in Europe and his filing of the application in the United States supported his bona fide intent to use the mark in America. The TTAB noted that it was searching for documentary evidence beyond the filing of a trademark application. Contrasting Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351 (TTAB 1994), in which there was documentary evidence of the applicant's attempts to obtain a licensee for its trademark in the United States, the TTAB could not point to any corroborative evidence to substantiate Winkelmann's bona fide intent to use the mark in the United States. In fact, Winkelmann's only evidence of his bona fide intent to use the mark consisted of untranslated documents in German. The TTAB found these documents to be ambiguous. The TTAB further surmised that, if translated, they potentially supported use of the mark in connection with promotional services for the goods, but not for the goods themselves. Winkelmann also submitted declarations by his foreign and American attorneys attesting to his bona fide intent to use the mark, but the TTAB accorded such declarations minimal weight since they were third-party declarations and were subjective at best.

The Objective Evidence Requirement

The TTAB noted that the test for determining whether an applicant has a bona fide intent to use focuses on the “entirety of the circumstances, as revealed by the evidence of record.” While the type of objective evidence may vary according to the circumstances of a case, the TTAB undeniably would require objective proof. The TTAB explained, “the Board uses the same objective, good-faith analysis that it uses in determining whether an applicant under Section 1(b) has the required bona fide intent to use the mark in U.S. commerce.” Here, the Board was unpersuaded that Winkelmann had submitted sufficient objective evidence to support his bona fide intent to use the mark in U.S. commerce, and therefore, there was not a genuine issue of material fact. Accordingly, the TTAB upheld Honda's motion for summary judgment, and the TTAB refused registration of Winkelmann's mark.

Conclusion

The case is noteworthy because it establishes that applicants under 44e (and likely 44d and 66a) must demonstrate objectively their bona fide intent to use the mark in commerce if a challenger seeks to oppose their applications. It is not sufficient to submit a declaration saying the applicant has a bona fide intent to use the mark. There must be some more documentary evidence to demonstrate the bona fide intent. Furthermore, for those attorneys filing applications based on foreign rights, Honda is a cautionary tale against inserting the entire list of goods/services into the USPTO application without confirming a true bona fide substantiable intent to use. Honda also provides a clear tool for challenging foreign applications and registrations. Finally, Honda provides some window into the TTAB's thinking as to what kind of evidence is needed to support a bona fide intent to use a mark in any 1(b) application.

Kyle-Beth Hilfer, Esq. specializes in advertising, marketing, intellectual property, and licensing law. Hilfer advises clients regarding advertising, promotions, direct mail, trademarks, copyrights, licensing, new media, interactive and multimedia technology issues in both off-line and Internet settings. ' Kyle-Beth Hilfer, P.C. 2009

The TTAB has opined on the meaning of a bona fide intent to use a trademark in connection with a Section 1b intent to use trademark application. None of these opinions, however, has delineated a clear bright-line test defining bona fide intent to use. In April 2009, the TTAB, ruling in Honda Motor Co., Ltd. v. Friedrich Winkelmann , 90 USPQ2d 1660 (TTAB 2009) [precedential], established the meaning in the context of a trademark application based on foreign registration rights under Section 44, rather than on use in interstate U.S. commerce. The TTAB looked for clear objective proof of a bona fide intent, rather than subjective assertions, in the face of an opposition proceeding.

The Trademark Act requires that an application be based either on use (Section 1a) or a bona fide intent to use (Section 1b), as recited in the application. Applications that rely on foreign applications (Section 44d) or registrations (Section 44e) or on the Madrid Protocol (Section 66a) also must include a verified statement that the applicant has a bona fide intent to use the mark in U.S. commerce.

Honda's Opposition

In the Honda case, a German national applied to register “V.I.C.” for “vehicles for transportation” based upon a German registration under Section 44e. Honda opposed the application initially based on a likelihood of confusion with its mark “CIVIC” for automobiles and structural parts for automobiles. It later amended its opposition to include the argument that Winkelmann “lacked the requisite bona fide intent to use the mark in [U.S.] commerce at the time of filing his application.” Honda cited as support for its argument, Winkelmann's responses to interrogatories and document requests. Winkelmann admitted that it “has not had activities in the U.S. and has not made or employed a business plan, strategy, arrangements or methods there” and “has not identified channels of trade that will be used in the United States.” Honda “conclude[d] that the absence of any other documentary evidence, prepared, created or produced prior to the filing date of the application or subsequent thereto, demonstrates [A]pplicant's lack of the requisite bona fide intent at the time of filing, rendering the application void ab initio.” Honda requested summary judgment as a matter of law.

An Issue for Summary Judgment?

Exploring whether the question of an applicant's bona fide intent to use is a question of fact or law appropriate for summary judgment, the TTAB noted that while “the factual question of intent is particularly unsuited to disposition on summary judgment ' the absence of any documentary evidence regarding an applicant's bona fide intention to use a mark in commerce is sufficient to prove that an applicant lacks such intention as required by Section 1b of the Trademark Act unless other facts are presented which adequately explain or outweigh ' [the] failure to provide such documentary evidence.” The TTAB cited here to Commodore Electronics Ltd v. CBM Kabushiki Kaisha , 26 USPQ2d 1503, 1507 (TTAB 1993) (while Congress did not define “bona fide” intent to use, the legislative history of the Trademark Law Revision Act suggests a need for objective evidence).

Winkelmann fought Honda's motion, countering that his registration and use of the mark in Europe and his filing of the application in the United States supported his bona fide intent to use the mark in America. The TTAB noted that it was searching for documentary evidence beyond the filing of a trademark application. Contrasting Lane Ltd. v. Jackson International Trading Co. , 33 USPQ2d 1351 (TTAB 1994), in which there was documentary evidence of the applicant's attempts to obtain a licensee for its trademark in the United States, the TTAB could not point to any corroborative evidence to substantiate Winkelmann's bona fide intent to use the mark in the United States. In fact, Winkelmann's only evidence of his bona fide intent to use the mark consisted of untranslated documents in German. The TTAB found these documents to be ambiguous. The TTAB further surmised that, if translated, they potentially supported use of the mark in connection with promotional services for the goods, but not for the goods themselves. Winkelmann also submitted declarations by his foreign and American attorneys attesting to his bona fide intent to use the mark, but the TTAB accorded such declarations minimal weight since they were third-party declarations and were subjective at best.

The Objective Evidence Requirement

The TTAB noted that the test for determining whether an applicant has a bona fide intent to use focuses on the “entirety of the circumstances, as revealed by the evidence of record.” While the type of objective evidence may vary according to the circumstances of a case, the TTAB undeniably would require objective proof. The TTAB explained, “the Board uses the same objective, good-faith analysis that it uses in determining whether an applicant under Section 1(b) has the required bona fide intent to use the mark in U.S. commerce.” Here, the Board was unpersuaded that Winkelmann had submitted sufficient objective evidence to support his bona fide intent to use the mark in U.S. commerce, and therefore, there was not a genuine issue of material fact. Accordingly, the TTAB upheld Honda's motion for summary judgment, and the TTAB refused registration of Winkelmann's mark.

Conclusion

The case is noteworthy because it establishes that applicants under 44e (and likely 44d and 66a) must demonstrate objectively their bona fide intent to use the mark in commerce if a challenger seeks to oppose their applications. It is not sufficient to submit a declaration saying the applicant has a bona fide intent to use the mark. There must be some more documentary evidence to demonstrate the bona fide intent. Furthermore, for those attorneys filing applications based on foreign rights, Honda is a cautionary tale against inserting the entire list of goods/services into the USPTO application without confirming a true bona fide substantiable intent to use. Honda also provides a clear tool for challenging foreign applications and registrations. Finally, Honda provides some window into the TTAB's thinking as to what kind of evidence is needed to support a bona fide intent to use a mark in any 1(b) application.

Kyle-Beth Hilfer, Esq. specializes in advertising, marketing, intellectual property, and licensing law. Hilfer advises clients regarding advertising, promotions, direct mail, trademarks, copyrights, licensing, new media, interactive and multimedia technology issues in both off-line and Internet settings. ' Kyle-Beth Hilfer, P.C. 2009