Intent to Use

In the Lincoln National case, the applicant, Kent G. Anderson, had filed two applications covering 11 International Classes (eight in one application and 11 in the other), namely, International Class 3 (cosmetics), 12 (motor vehicles), 35 ( retail services), 36 (financial services), 37 (planning and installation services), 38 (broadcasting), 39 (transportation), 40 (manufacturing cars, aircraft and other items for others), 41 (entertainment including amusement park services), 42 (engineering consulting), 43 (hotels and restaurants) and 45 (law enforcement and legal services). In fact, the description of goods and services wanders over many pages, leading the TTAB to observe this was a “plethora” of goods and services that was “exceedingly long, repetitive and confusing.”

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 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'” so that Anderson's applications were found void ab initio. The TTAB, it should be noted, used the same reasoning to invalidate as void ab initio the application that merely included eight International Classes.

Ironically, Anderson's applications were for the mark FUTURE although, as things turned out, his mark had none. The TTAB was wholly 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.” For example, the applicant testified, when asked, that his prospective customers were “[t]he world. Every person in the world. I'm trying to do that, but that's for the future plan.” The TTAB's skepticism likely found support 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 stated, “I don't manufacture products, because I never could find the resources to do that.” The TTAB, with respect to the services, observed that there was no evidence that the applicant held any of the necessary licenses to perform the described services nor had he ever been employed by a bank or other financial institution.

The applicant also attempted to convince the TTAB that his expectation of licensing the mark to third parties supported his bona fide intent. The TTAB, however, stated, in a passage that could apply to many similarly placed applicants: “We find that these assertions by applicant of a generalized intention to license the mark or partner with others at some indefinite time in the future do not suffice as a basis for a finding that applicant had the requisite specific bona fide intent to use the mark in commerce ' at the time he filed the application.”

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 to make this case a precedent, we can infer the TTAB's “intent” is to have Lincoln National serve as a warning to those who file overly broad and all-encompassing applications based on intent-to-use. Where “intent-to-use” applications are the subject of future TTAB oppositions or cancellations, “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 the 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 ”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.

Ed Komen is a partner in the Entertainment, Technology and Advertising and the Intellectual Property Practice Groups of Sheppard Mullin Richter & Hampton LLP in the firm's Washington, DC, and Century City, CA, offices. His global practice includes all aspects of copyright, trademark and unfair competition law as well as personality rights under the laws of publicity, privacy and defamation with a particular emphasis on motion picture, media, fashion, advertising and technology companies.

Bona fide intent, the sine qua non of non-use trademark applications, was given new meaning by the Trademark Trial and Appeal Board (TTAB) in a decision released unpublished Feb. 21, 2014, but redesignated as precedent on March 26, 2014. The decision, Lincoln National Corporation v. Anderson, Consolidated Opposition Nos. 91192939 and 91194817, TTAB Mailed Feb. 21, 2014, exemplifies an apparent trend of the TTAB requiring greater proof of an applicant's “intent” as a jurisdictional prerequisite for filing an application 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. In other words, this is the paradigm of the “ticking time bomb” trademark nightmare with a very long fuse.

The Trademark Law Revision Act of 1988 (TLRA), effective Nov. 16, 1989 Public Law 100-667, Nov. 16, 1988, 102 Stat. 2925, 100th Cong., 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 not based on use.

In the Lincoln National case, the applicant, Kent G. Anderson, had filed two applications covering 11 International Classes (eight in one application and 11 in the other), namely, International Class 3 (cosmetics), 12 (motor vehicles), 35 ( retail services), 36 (financial services), 37 (planning and installation services), 38 (broadcasting), 39 (transportation), 40 (manufacturing cars, aircraft and other items for others), 41 (entertainment including amusement park services), 42 (engineering consulting), 43 (hotels and restaurants) and 45 (law enforcement and legal services). In fact, the description of goods and services wanders over many pages, leading the TTAB to observe this was a “plethora” of goods and services that was “exceedingly long, repetitive and confusing.”

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 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'” so that Anderson's applications were found void ab initio. The TTAB, it should be noted, used the same reasoning to invalidate as void ab initio the application that merely included eight International Classes.

Ironically, Anderson's applications were for the mark FUTURE although, as things turned out, his mark had none. The TTAB was wholly 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.” For example, the applicant testified, when asked, that his prospective customers were “[t]he world. Every person in the world. I'm trying to do that, but that's for the future plan.” The TTAB's skepticism likely found support 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 stated, “I don't manufacture products, because I never could find the resources to do that.” The TTAB, with respect to the services, observed that there was no evidence that the applicant held any of the necessary licenses to perform the described services nor had he ever been employed by a bank or other financial institution.

The applicant also attempted to convince the TTAB that his expectation of licensing the mark to third parties supported his bona fide intent. The TTAB, however, stated, in a passage that could apply to many similarly placed applicants: “We find that these assertions by applicant of a generalized intention to license the mark or partner with others at some indefinite time in the future do not suffice as a basis for a finding that applicant had the requisite specific bona fide intent to use the mark in commerce ' at the time he filed the application.”

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 to make this case a precedent, we can infer the TTAB's “intent” is to have Lincoln National serve as a warning to those who file overly broad and all-encompassing applications based on intent-to-use. Where “intent-to-use” applications are the subject of future TTAB oppositions or cancellations, “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 the 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 ”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.

Ed Komen is a partner in the Entertainment, Technology and Advertising and the Intellectual Property Practice Groups of Sheppard Mullin Richter & Hampton LLP in the firm's Washington, DC, and Century City, CA, offices. His global practice includes all aspects of copyright, trademark and unfair competition law as well as personality rights under the laws of publicity, privacy and defamation with a particular emphasis on motion picture, media, fashion, advertising and technology companies.