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Legal Update

Foreign Priority Trademark Applicants Should Document Evidence to Support Bona Fide Intent to Use the Mark in the United States

12 May 2009
Mayer Brown Legal Update

The Trademark Trial and Appeal Board (the “Board”) has denied registration to a foreign applicant who claimed priority based on a German registration under Section 44 of the Lanham Act. The Board granted summary judgment in favor of the opposer after finding no evidence that the applicant had a bona fide intent to use the mark in the United States.

In Honda Motor Co., Ltd. v Friedrich Winkelmann, (Opposition No. 91170552), the opposer, Honda, asserted that the applicant's mere statements of subjective intent, without some supporting documentation, were insufficient to demonstrate the requisite bona fide intent to use the mark in commerce at the time the application was filed. While acknowledging that the factual question of intent is particularly unsuited to summary judgment and that the Trademark Act does not impose any specific documentation requirement to show such a claim, the Board nonetheless ruled that applicant’s subjective claims of a bona fide intent were insufficient to raise a genuine issue of material fact.

The Board found persuasive that applicant admitted in discovery responses that he had no activities in the United States, had not made or employed any business plan or strategy, and had not identified the channels of trade that he would use in the United States. Accordingly, the Board found that applicant had failed to produce anything to corroborate his claim of a bona fide intent to use the mark in the United States.

Although applicants under Section 44 of the Lanham Act are not required to prove actual use of the applied-for mark in US commerce, non-US companies that file priority applications under Section 44 should have documents, at the time of filing, that support their bona fide intent to use the mark in the United States. While the specific type of evidence will depend on the circumstances of each case, examples of objective, good-faith evidence include business plans, promotional materials, and documents identifying potential channels of trade.

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