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Section 1(b) Intent-To-Use Applications: Evidence of Bona Fide Intent Required

Written by Christine M. Baker

If you’re familiar with the federal registration of trademarks and service marks in the United States, you know that U.S. trademark law allows an applicant to seek registration of a mark based on either actual use of a mark in interstate commerce  (15 U.S.C. Sec 1051(a)) or on a bona fide intent to use the mark in U.S. commerce (15 U.S.C. Sec 1051(b)).   While the option of filing an intent-to-use trademark or service mark application (ITU application) when a mark is not being used commercially is helpful, filers should think twice about whether they have the required “bona fide intent” to use a mark at the time of filing.  The absence of such an intent can render an application or registration invalid in an opposition or cancellation proceeding before the USPTO’s Trademark Trial and Appeal Board (TTAB).

The TTAB recently issued a precedential opinion sustaining an opposition against an ITU application given the applicant's failure to submit documentary evidence establishing its intent to use the mark.  In Spirits International BV v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPT 2d 1545 (TTAB 2011), S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi (S.S. Taris) filed an ITU application to register the mark MOSKONISI for a variety of goods in several International Classes, including alcoholic beverages.  When the mark MOSKONISI was published for opposition purposes, Spirits International BV (Spirits) opposed registration of the mark on the grounds that the mark MOSKONISI was confusingly similar to the mark MOSKOVSKAYA for vodka in Spirits' earlier-filed ITU application and that S.S. Taris lacked a bona fide intent to use the mark MOSKONISI in commerce in connection with alcoholic beverages.  S.S. Taris filed an answer denying Spirits Internationals’ allegations, but failed to produce documents responsive to Spirits' request for production of documents that supported S.S. Taris’ bona fide intent to use the mark MOSKINISI.  Nor did S.S. Taris provide any information of its intent to use the mark in response to Spirits' interrogatories seeking such information.  In fact, S. S. Taris asserted that it did not have any materials evidencing, reflecting or referring to its use or intended use of the mark MOSKONISI in connection with any alcoholic product, an authorized licensee of the mark in the United States, marketing plans for any alcoholic products or any documents evidencing the channels of trade through which products had been sold or through which S.S. Taris intended to sell products under the mark in the United States.  S. S. Taris also failed to answer an interrogatory asking what type of alcoholic products it intended to sell and its intended channels of trade.

In addressing the issue of S.S. Taris' lack of intent, the TTAB determined that Spirits had the initial burden of demonstrating by a preponderance of the evidence that the applicant lacked a bona fide intent to use the mark as of the application filing date or during the opposition proceeding.  Since S. S. Taris failed to furnish any documentary evidence regarding its intent to use the mark MOSKONISI on alcoholic beverages and affirmatively stated that no such documents existed during the discovery phase of the proceeding, the TTAB held that Spirits satisfied its initial burden of proof.  The burden then shifted to S. S. Taris to present evidence that would adequately explain or outweigh its failure to provide such documentary evidence.   Since S. S. Taris did not submit any evidence in the proceeding or file a brief, the TTAB concluded that the applicant failed to rebut Spirits' evidence.  Accordingly, the TTAB sustained the opposition on the ground that S. S. Taris lacked a bona fide intent to use the mark MOSKONISI for the identified goods.   

You’ve probably heard the mantra at least one point in your life that “just because you can do something, doesn’t mean you should.”  This mantra can be applied to the filing of intent to use trademark applications with the USPTO.  Although it’s great to have the option of filing an ITU application, an ITU application should not be filed if you simply want to reserve a mark.  Rather, a Section 1(b) application should only be filed if you honestly intend to use a mark in the future.  In that case, you should document all steps taken that prove your bona fide intent to use the mark in commerce before you file an ITU application and leading up to the launch of your products or services, such as: 

            ● Notes from marketing meetings about the mark and new products or services 

            ● Marketing plans and test-marketing efforts, i.e., consumer surveys

            ● Executive feedback on the mark and a  list of company personnel

                involved in the selection of  the mark

            ● Trademark search reports

            ●  Expenses incurred with the development of logos, product packaging,

                advertisements and prototypes;

            ●  Domain name registrations and web site development, and

            ● Steps taken to use mark in commerce, i.e., obtain suppliers, distributors,

                government approval and licensees.

The S.S. Taris decision is a warning to brand owners that they should develop a system for memorializing their good faith intent to use a trademark.  The failure to do so can be fatal to the validity of an ITU application or a registered mark in opposition and cancellation proceedings before the TTAB. Federal courts also may adopt the TTAB’s reasoning in the future so keeping a centralized file of all documents relating to one’s bona fide intent could be very useful if a brand owner finds itself involved in a trademark infringement action.  Please note, however, that retaining documents establishing one’s bona fide intent to use a mark does not eliminate the need to do a full trademark search, which should be done before an ITU application is filed with the USPTO.

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Geri Haight is a Mintz Member and former in-house counsel who focuses on employment litigation, counseling, and compliance, as well as intellectual property and trade secret matters.

Christine Baker