The Sixth Circuit recently answered this question. See Kelly Servs., et al. v. Creative Harbor, Case No. 16-1200 (6th Cir., Jan. 23, 2017), where the Sixth Circuit remanded the case back to the district court to evaluate all the goods and services in the trademark application and to determine if a bona fide intent existed for some of the goods and services. The parties in this matter both filed a trademark application at the United States Patent & Trademark Office (“USPTO”) for the mark WORKWIRE for mobile software applications in the employment field.
Creative Harbor, LLC (“Creative Harbor”) filed its intent-to-use application on February 19, 2014. The other party Kelly Services, Inc. (“Kelly Services”) filed its intent-to-use application for the mark WORKWIRE on August 13, 2014. Creative Harbor discovered that Kelly Services was using the mark WORKWIRE and sent a Cease & Desist demand. In response, Kelly Services filed a declaratory judgment action challenging Creative Harbor’s claim that it had priority.
The district court held that Creative Harbor lacked a bona fide intent to use the mark in commerce for some of the goods and services identified in the trademark application. The district court voided the entire application and Creative Harbor appealed to the Sixth Circuit. The Circuit Court placed emphasis on the deposition testimony of the CEO of Creative Harbor. The CEO stated that he wanted the intent-to-use application to cover goods and services, not only for the present, but also for the future. He further testified that the identification in the application was to cover goods for future exploration and expansion; “to keep the option open to at some point do that”. The Sixth Circuit concluded that Creative Harbor did not have a firm intention to use the mark with all the goods and services, but instead was reserving a right in the mark in case it ever wanted to expand its commercial line of goods.