Rights and Remedies for United States Trademark Registrants Obtaining Protection under the Madrid Protocol or other Foreign Filing Basis:

Is Trademark Use in the U.S. Required for Enforcement Prior to Filing a Declaration of Continued Use between the Fifth and Sixth Year of Registration?

I – Overview of U.S. filing procedure based on foreign or International registrations

wipo-logoA party may apply for a U.S. trademark registration under Lanham Act Sections 1 or 44, or a party may request an extension of protection to the U.S. of an International Registration issued by WIPO under Section 66 via the Madrid Protocol.  Section 44(e) applications based on an existing foreign trademark registration and Section 66(a) extensions for protection under Madrid may proceed to registration in the U.S. on the Principal Register without a showing of actual use. [1]  Both Section 44(e) and Section 66(a) applications require that the Applicant submit a “declaration of bona fide intention to use the mark in commerce.” [2]  The standard for determining whether the Applicant has a bona fide intent to use the mark in U.S. commerce is the same as for applications made under Section 1(b).  However, for registrations based on foreign or International registrations, actual use need not be shown until the first declaration of use is due between the 5th and 6th year following registration.

II – Standing to sue for trademark infringement

A party who has obtained a U.S. registration based on a Section 44(e) or Section 66(a) who has not yet begun using the mark in the U.S. still has standing to sue another party for trademark infringement. [3]  Accordingly, should a third party start using the mark after the date of “constructive use” afforded to the registrant, the registrant may bring an infringement action based upon its federal registration regardless of whether the registrant has begun using the mark in the U.S.

III – Risks of litigation

Although the mark owner may have standing to sue for infringement based on its registration, such an infringement action carries significant risks.  The party being sued for infringement will have a high incentive to bring a counterclaim for cancellation of the trademark registration.  This is particularly true in the case of an International Registration that contains an apparently overly broad description of goods or services, and the description was not limited in the U.S. request for extension.  In some countries, it may be easy and desirable to obtain registrations covering entire classes or several international classes of goods or services.  In the U.S., however, the Applicant must be using the mark on all of the goods or services listed in the identified classes or declare that it has a bona fide intent to use the mark on all of the goods or services.  Where the International Registration is very broad on its face and the Applicant does not amend the listing of goods or services upon extension into the U.S., such a listing invites an attack via cancellation or opposition, where it may be reasonably anticipated that the Applicant would not be putting all of the goods or services into U.S. commerce.

Indeed, by signing the declaration in an overbroad application or request for extension, the Applicant may be committing fraud on the USPTO.  It is more difficult to prove allegations fraud before the USPTO after the Federal Circuit’s decision in In re Bose Corp., [4] which would invalidate the entire registration, because it is a high burden to establish the requisite intent.  In contrast, a claim that the registrant lacked a bona fide intention to use the mark on some or all of the goods or services, which would warrant at least partial cancellation, may be difficult for the registrant to defend, particularly where no use of the mark has been made in the U.S. at the time the dispute arises.

The Trademark Trial and Appeal Board (TTAB) has determined that a solely subjective and unsubstantiated intent to use the mark on the identified goods or services will not support a claim of a bona fide intent to use the mark in U.S. commerce.  Accordingly, the registrant will need to produce objective documentary evidence demonstrating that it had a bona fide intention to use the mark in U.S. commerce on all of the goods and services applied for, continuing to any date of actual use.  Such evidence may include documented business plans, product design or manufacturing efforts, correspondence with prospective licensees, records of ongoing business discussions, or promotional activities related to using the mark in the U.S. [5]  The opponent must merely show, by a preponderance of the evidence, that the registrant lacked a bona fide intention to use the mark on the identified goods or services, and such burden may be met by the fact that the registrant lacks the objective documentary evidence to rebut the claim.  Whether the cancellation claim is decided by the TTAB or a court, the failure to provide sufficient evidence of a bona fide intent to use the mark could result in cancellation of the registration in whole or in part.

It may be possible to defend the cancellation counterclaim without the objective documentary evidence, but it will be difficult to accomplish, and it is not clear what additional facts could adequately explain or outweigh the registrant’s failure to provide the evidence. [6]

IV – Recommendations

Limit Overly-Broad Descriptions of Goods

When extending trademark protection into the U.S. based on a Section 44(d), (e) or Section 66(a) application, the listing of goods and services should be reviewed to determine whether it is overly broad.  If so, an amendment should be filed to delete any goods or services that would not reasonably be used prior to registration of the trademark in the U.S.

Before bringing an infringement action against a junior user of a mark in the U.S. based on a Section 44(e) or Section 66(a) trademark registration, the registrant should first ensure that its registration is not overly broad with respect to the goods or services.  If it is, the registrant should file an after-registration amendment and/or anticipate that the court may direct the registrant to make an amendment in the USPTO to delete some goods from the registration.

Collect Information that Supports Bona Fide Intention to Use the Mark

The registrant should document its intention to use the mark in the U.S. prior to bringing an infringement action if use has not already begun.  It is recommended that the registrant save documentation that supports its bona fide intention to use the mark in the U.S.  This information will be useful in the event litigation is considered and will also be available to support the declaration of use that is required post-registration.  If such information is routinely collected, it will reduce the possibility that records are unavailable when needed in the future and possibly lessen the burden on a company’s legal department or outside counsel to collect relevant business development information when evaluating its litigation strategy.  If some use of the mark can be demonstrated by the registrant, such evidence would be important to protect the mark from partial cancellation with respect to additional goods or services included in the registration but not yet active.  This would be just as important as protecting the mark from total cancellation where the registrant does have a desire to expand into the market for the yet-unused goods or services.  Notably, the declaration made by the registrant or its counsel during the application process alone will not support a finding of requisite intent to use the mark, even though such declaration was made “under penalty of perjury.”  Similarly, mere arguments of counsel during court or TTAB proceedings will be insufficient without supporting documentary evidence. [7]

[1] § 44(d) applications based on an earlier filed foreign application must also state a basis for registration under another provision of the Lanham Act.

[2] 15 U.S.C. § 1226(e).

[3] See, e.g., Sandro Andy, S.A. v. Light Inc., No. 12 Civ. 2392, 2012 U.S. Dist. LEXIS 182401 (S.D.N.Y. Dec. 27, 2012).

[4] 580 F.3d 1240 (Fed. Cir. 2009).

[5] See Research In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926 (T.T.A.B. 2009) (precedential opinion).

[6] See Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (T.T.A.B. 2009) (precedential decision).

[7] Id.

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