Under the Lanham Act, specifically 15 U.S.C. §1051(b) a trademark applicant may apply for registration, even if they have not commenced use of the trademark in commerce. This provides the trademark applicant with a critical advantage. The applicant may use its filing date as a “constructive use” date for purposes of nationwide priority. See our post entitled What Constitutes Use In Commerce For A Service Mark? where we discuss how a trademark applicant can rely on their trademark filing date to establish priority. The trademark applicant must carefully document their bona fide intent. Most trademark applicants are not aware of this requirement and as a result, could have their application refused registration if challenged.
The party challenging the trademark applicant (the “opposer”) has the burden of demonstrating by a preponderance of the evidence that the applicant lacks the requisite intent to use the trademark in connection with the services or goods in commerce. See SmithKline Beecham Corp. v. Omnisource DDS LLC, 97 USPQ2d 1300 (TTAB 2010). If the trademark applicant cannot rebut the prima facie case, then summary judgment will be granted. The determination as to whether there is a bona fide intent to use the mark in commerce, is an objective one based on all the circumstances.
The Trademark Trial and Appeal Board (TTAB) recently determined that the trademark applicant did not satisfy its burden to come forward with documentary evidence of a bona fide intent to use the mark in commerce and granted the opposer’s motion for summary judgment. See PRL USA Holdings, Inc. v. Rich C. Young, Opposition No.91206846 (October 16, 2016) [not precedential]. In this case, the opposer was the owner of RALPH LAUREN POLO & Design and the trademark POLO. The trademark applicant filed for IRISH POLO CLUB USA & Design for shirts. Because the opposer was successful in showing that the applicant lacked a bona fide intent to use the mark, the TTAB did not have to determine the issues of likelihood of confusion and dilution. Generally, whether a trademark applicant possesses a bona fide intent to use the mark in commerce is not suitable for summary judgment disposition. However, if there is no genuine dispute of material fact as to the trademark applicant’s lack of intent to use the trademark as of the filing date, then the motion for summary judgment will be granted. In PRL USA Holdings, Inc., the opposer through its discovery requests demonstrated that the applicant could not produce any documents to support its mere allegations of intent.