I have written several blog posts on this top, and it is important to continue to discuss what documentation is required if an applicant must prove they possessed a bona fide intent to use a mark in commerce. See my blog posts entitled, Federal Circuit’s View Of Lack Of Bona Fide Intent To Use, and Should An Entire Application Be Voided If A Bona Fide Intent To Use Is Lacking, for more on this topic. An applicant filing a trademark application based on the 1(b) basis (intent to use a trademark in commerce) must submit a verified statement to this effect. The United States Patent & Trademark Office (the “USPTO”) will typically accept this statement without question. However, a third party may raise this issue in a challenge to the validity of the trademark application. If a party cannot overcome the challenge, an applicant or registrant may lose its trademark rights.
The Trademark Trial and Appeal Board (the “TTAB” or the “Board”) has not issued a plethora of decisions on this issue, but there are some decisions that provide guidance. Initially, the burden is on the opposer to demonstrate that the applicant does not have documentary evidence to support the claim of a bona fide intent to use. If the applicant cannot prove through objective evidence (most often documentation) that it’s intent existed, then the Board may sustain the opposition or cancel the registration. If there is no objective evidence, the Board may even grant summary judgment to a movant. A party may rely on documentary evidence used after the filing of the trademark application. However, having documents substantiating this position dated before the filing of the application will be strong evidence of a party’s intent.
A trademark application in the name of the mark identifying the goods or services or the trademark clearance search for the same, without more will not be sufficient evidence of an applicant’s bona fide intent to use the mark in commerce. See Swiss Grill Ltd., John Hartwig, Christopher Hartwig and Mathhew Hartwih v. Wolf Steel Ltd., 115 USPQ2d 2001 (TTAB 2015) [precedential]. However, in the cited case of Swiss Grill Ltd. et al, there was no documentary evidence of record to support the bona fide intent to use the mark in commerce.
In another case, The Board held that the evidence did support a bona fide intent to use the mark in commerce based on an email to a potential licensing representative prior to the filing of the trademark application. See Hard Candy Cases, LLC, v. Hard Candy LLC, Opposition No. 91195328 (November 13, 2014) [not precedential], where the Board held the applicant’s documentation and testimony were consistent and supportive of an intent to use the mark in commerce. In this case, there was an email that stated that the company was seeking to extend the trademark HARD CANDY to a lifestyle brand. The testimony supported the allegation that a subsequent telephone discussion to the same potential licensing representative referenced handbags (the identified goods in the application).
Also, there were emails after the application filing to the same potential licensing representative referencing leather goods (the identified goods in the trademark application). One of the emails discussed a meeting with Walmart. The Board stated that the crux of the applicant’s efforts was to expand its product lines, and this would be based on Walmart’s agreement to purchase and sell the new product lines. Post filing documentation is admissible to support a pre-filing bona fide intent.
In this case, the Opposer attempted to use applicant’s many abandoned intent to use trademark applications to support a theory that abandoned intent to use trademark applications (dozens) indicate a lack of a bona fide intent from the beginning. Although the Board acknowledged that in some circumstances this may evidence a lack of bona fide intent, there are also a myriad of legitimate reasons why an intent to use application may be abandoned. In the end, pre-filing documentation is not required to prove a bona fide intent to use the trademark in commerce, but it is certainly advantageous if such documentation exists. If you have questions, regarding what is required to demonstrate a bona fide intent to use, please do not hesitate to contact our office for a courtesy consultation.