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Presenting a live 90-minute webinar with interactive Q&A

Intent to Use Trademark Applications:

Pros and Cons, Demonstrating ITU,

Converting to Actual Use

Today’s faculty features:

1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific

THURSDAY, OCTOBER 26, 2017

James L. Bikoff, Partner, Smith Gambrell & Russell, Washington, D.C.

Victoria Burke, Esq., Scott+Scott, San Diego

Hillary Kane, Interim Director of Public Affairs, Southwestern Law School, Los Angeles

Darlene S. Klinksieck, Trademark Portfolio Manager, Smith Gambrell & Russell, Washington, D.C.

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V I C T O R I A B U R K E , E S Q

A T T O R N E Y , S C O T T + S C O T T , A T T O R N E Y S A T L A W , L L P

INTENT TO USE TRADEMARK APPLICATIONS

15 U.S.C. § 1051(b)(1)

• “A person who has a bona fide intention, under

circumstances showing the good faith of such

person, to use a trademark in commerce may

request registration of its trademark on the principal

register hereby established by paying the

prescribed fee and filing in the Patent and

Trademark Office an application and a verified

statement…”

• To convert an ITU application to actual use,

applicant later must file a statement of use (SOU) to

attain formal TM registration. 6

WHY DO WE HAVE ITU APPLICATIONS?

• 1988 Congress amended the Lanham Act by passing the Trademark Law Revision Act (TLRA)

• Up until 1988, an applicant had to prove actual use of an applied-for mark

• Leveled the playing field between U.S. and international applicants

• In many foreign countries, an applicant is not required to prove actual use before attaining a TM registration

7

INTERNATIONAL APPLICANTS

• Under section 44e (Paris Convention), international

applicants could establish priority in US based on

their existing foreign registration (which could be

obtained without showing use)

• After the change in law in 1988, applicants relying

on an international registration filing under section

44e and section 66a (Madrid Protocol) must submit

verification of a bona fide intention to use the mark

in commerce when registering that mark with the

USPTO

8

PURPOSE IS NOT TO RESERVE A MARK

• An applicant must have a bona fide intention to

use a mark at the time of filing an application.

• But what exactly does bona fide mean?

• Unclear what “circumstances” may demonstrate

“good faith”

• Congress in drafting the Trademark Law Revision

Act omitted a statutory definition of the term bona

fide

9

OBJECTIVE

• Legislative History:

• “’Bona fide’ should be read to mean a fair, objective determination of the applicant’s intent based on all the

circumstances.” –S. Rep. No. 100-515, at 23 (1988)

• J. Thomas McCarthy:

• “the evidence is ‘objective’ in the sense that it is evidence

in the form of real life facts and by the actions of the

applicant.” -3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition § 19:14 (4th ed. 2015)

10

TIMING IS PARAMOUNT

• Bona fide intention to use must exist at the time of filing • –Swatch AG v. M.Z. Berger & Co., 108 U.S.P.Q.2d (BNA) 1463, 1476 (T.T.A.B. 2013)(precedential)

• As long as the applicant’s bona fide intention to use is OBJECTIVELY PRESENT at the filing, the documentary evidence for this intent does not necessarily have to be contemporaneous with the actual filing date. • -Lane Ltd. V. Jackson Int’l Trading Co., 33 U.S.P.Q.2d (BNA) 1351, 1357 (T.T.A.B. 1994)

• Ex: Intention exists at time of filing, but it may be conditionally based on the outcome of a future event related to business development. • -S. Rep. No. 100-515, at 24 (1988).

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WHY IS THIS IMPORTANT?

• During an opposition to registration, if the TTAB finds an applicant lacked the requisite bona fide intention to use AT THE TIME OF FILING, the application becomes void ab initio. • –Spirits Int’l, B.V. V. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 U.S.P.Q.2d (BNA) 1545, 1546 n.3 (T.T.A.B.

2011).

• If void ab initio, then claims such as priority or likelihood of confusion will not be entertained. • -SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 U.S.P.Q.2d (BNA) 1300, 1305 (T.T.A.B. 2010) (precedential).

• Hence the importance of an attorney to counsel a client to proactively establish objective evidence at time of filing.

• Having an attorney sign off is not sufficient to demonstrate intent. • -Trs. Of the Bonnie Cashin Found. V. Lake, No. 91213081, slip. Op. at 3, 9 (T.T.A.B. Oct. 12, 2016) (nonprecedential)

12

POORLY BUILT APPLICATIONS: TTAB EXAMPLES OF WHAT IS NOT SUFFICIENT

• Relies on subjective evidence

• Absence of any documentary evidence • Thus applicant’s documentary evidence should be

presentable in a definitive format at time of filing. • -Honda Motor Co. v. Winklemann, 90 U.S.P.Q.2d (BNA) 1660, 1664 (T.T.A.B. 2009).

• Must be more than merely steps made to file a TM application • -SWATCH AG V. M.Z. Berger & Co., 108 U.S.P.Q.2d (BNA) 1463, 1472 (T.T.A.B. 2013).

• Intended use must be for more than to reserve a right in a mark • -Commodore Elecs. Ltd. V. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d (BNA) 1503, 1506 n.7 (T.T.A.B. 1993).

• Must be more than “idealist hopes for forming a…company.” • -Lincoln Nat’l Corp. v. Anderson, 110 U.S.P.Q.2d (BNA (1271, 1277-78 (T.T.A.B. 2014) (precedential).

• Owning a patent—on its own—is not sufficient (though it could go toward the totality of the circumstances) • -SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 U.S.P.Q.2d (BNA) 1300, 1304 (T.T.A.B. 2010).

13

MUST HAVE’S

• Must convey enough objective evidence to convey a legitimate business plan. • -PRL USA Holdings, Inc. v. Young, No. 912-6846, 2013 WL 5820849, at *5-6 (T.T.A.B. Oct. 16, 2013)(nonprecedential)

• Business plan needs to be more than securing a mark with the purpose of using said mark to attract investors

• -Diageo N. Am., Inc. v. Captain Russel Corp., No. 92103745, 2013 WL 5407296, at *4-5 (T.T.A.B. June 12, 2013)(nonprecedential)

• Should be able to show plans to produce any goods identified in the application. • Ex: TTAB found a lack of a legitimate business plan where

“[a]pplicant has neither given thought to where its goods under the [subject] mark would be manufactured, nor identified or contracted with third parties who might manufacture such goods, nor identified materials needed therefor, nor prepared any schematics therefor, nor prepared instructional manuals.”

• -SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 U.S.P.Q.2d (BNA) 1300, 1301 (T.T.A.B. 2010).

14

ADDITIONAL APPLICATION PROBLEMS

• Applying for an excessive number of trademark

applications or filing in numerous unrelated classes

could be indicative of an applicant who:

• lacks a bona fide intention to use

and/or

• is acting in bad faith.

• -L’Oréal S.A. v. Marcon, 102 U.S.P.Q.2d (BNA) 1434, 1444-45 (T.T.A.B. 2012).

15

IFFY: SOMETIMES SUFFICIENT / SOMETIMES NOT ENOUGH

• Some business planning exists:

• Enough: • Single, pre-filing email regarding the general goal of expanding

the use of the trademark to other goods along with some initial

talks with potential licensees regarding brand expansion was

enough (Notably, post-filing documentation was used in

conjunction with pre-filing documentation to establish pre-filing

intent) • -Hard Candy Cases, LLC v. Hard Candy, LLC, No. 91195328, slip op. at 11-12 (T.T.A.B. Nov. 13, 2014)

(nonprecedential)

• Insufficient: • “Vague references to research and development of products”

in the annual meeting minutes • --SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 U.S.P.Q.2d (BNA) 1300, 1304 (T.T.A.B. 2010).

16

ABILITY TO CURE AN APPLICATION

• If Applicant is guilty of excessive filing…

• BUT…lacks bad faith

• And Applicant can produce evidence of a bona fide intention to use at least some goods claimed in a class

• Then applicant may amend or divide out the goods in the application in a divisional procedure • -Wet Seat, Inc. v. FD Management, Inc., 82 U.S.P.Q.2d (BNA) 1629, 1630 (T.T.A.B. 2007).

• -Kelly Servs., Inc. v. Creative Harbor, LLC, 846 F.3d 857 (6th Cir. 2017).

• International: Applicant seeking to register a mark based on a foreign registration is also afforded this same opportunity to cure. • -Sandro Andyd S.A. v. Light Inc., No. 12 Civ. 2393, 2012 WL 6709268 at *5 (S.D.N.Y. Dec. 27, 2012)

17

TIPS AS AN ATTORNEY

• Do not blindly sign off on an ITU application for a client

without ensuring some proper thresholds have been met. • -Trs. Of the Bonnie Cashin Found. V. Lake, No. 91213081, slip op. at 3 (T.T.A.B. Oct. 12, 2016).

• At the time of filing, an applicant should have a “definite” plan explaining the purpose of the mark and

“documented to the degree appropriate to the product

or service in question.” • -J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 19:14 (4th ed. 2015).

• Applicant should maintain a record of the names of the

people involved in developing and marketing the

products or services to be offered under the trademark.

• These people will later be able to support, by testimony in

opposition or cancellation proceedings, the presence of bona

fide intent to use the mark.

18

ROADMAP TO USE FOR CLIENTS:

• 1. Applicant’s name (name of applicant or

company)

• 2. Today’s date

• 3. Who prepared the form for the trademark

registration (applicant, counsel, other)?

• 4. Have any business plans been discussed for the

trademark (informal or formal)? If yes, provide:

• Date discussions held

• Company members involved in the discussions

• Location where these discussions were held

• Format of business plans (written or unwritten)

19

ROADMAP CONTINUED

• 5. Has any market research for the product or service to be offered for sale under the trademark been conducted? • Describe steps taken

• List the people in the company responsible for the marketing decisions regarding the products/services for which the TM/SM will be used

• 6. What steps were taken to ensure trademark availability? Was a trademark search undertaken? • Date conducted

• Conducted by whom

• Method of TM search (informal Internet search, common-law trademark search, or via a formal trademark search company)

20

ROADMAP CONTINUED

• 7. Have any efforts been made to create a graphic

representation of the trademark?

• Graphic designer’s name

• Date graphic artist was consulted

• 8. Have any labels been made for a product or

service bearing the mark? (attach samples)

• 9. Has the mark been used in test marketing?

• Date(s)

• Details of the marketing test

21

ROADMAP CONTINUED

• 10. Have any attempts been made to locate

potential licensees? If yes, were these attempts for

domestic or international (or both) licensees?

Provide:

• Dates of attempts to secure licensees

• Names of potential licensees approached

• Method for contacting potential licensees (phone, e-mail,

in-person meets, etc)

• 11. Were any steps taken to secure permits

necessary for conducting business with the

trademark (regulatory)?

22

ROADMAP CONTINUED

• 12. Do you have any correspondence referring to efforts to launch products or services bearing the trademark?

• 13. Were any measures taken to secure an online presence (domain name registration, website construction)? • Date(s) of efforts

• Details of the registration/construction process

• 14. Have any steps been taken to procure physical space for the trademark products/services and business? • Address or location

• Date location was secured (or date prospective dates mtgs held)

• Under whose name was the space lease or titled

23

ROADMAP CONTINUED

• 15. Have any steps been taken to prepare for the

manufacturing of the product?

• Name of company and names of people contacted

• 16. What planning has been done:

• Budget

• Materials purchased

24

THANK YOU

James L. Bikoff

jbikoff@sgrlaw.com

Victoria Burke

vburke@scott-scott.com

Hillary Kane

hkane@swlaw.edu

Darlene S. Klinksieck

dklinksieck@sgrlaw.com

25