Friday, April 10, 2009

Precedential No. 15: Finding No Evidence of Bona Fide Intent to Use Mark in US, TTAB Sustains Opposition to 44(e) Application

In an article that we penned early last year, entitled "Unfriendly Shores: Recent Developments in U.S. Law May Trouble Foreign Trademark Owners," Ann Lamport Hammitte and I asked whether, in light of a then-recent ruling on bona fide intent, the Board was about to open up Pandora's Box for foreign applicants and registrants. Herr Freidrich Winkelmann found out the answer to that question in connection with his Section 44(e) application (based on a German registration) to register the mark V.I.C. for vehicles. The Board ruled that he had failed to establish the requisite bona fide intent to use his mark in the USA, and so it sustained Honda's opposition on summary judgment. Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) [precedential].

An applicant who applies for registration under Sections 44(e) of the Trademark Act must verify that he/she/it has a bona fide intent to use the mark in commerce. [The same is true for applicants under Section 44(d) and 66(a)]. The Board applies the "same objective, good faith analysis" as it applies under Section 1(b) for a U.S. applicant. See Lane Ltd. v. Jackson Int'l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994).

In Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB 1993), the Board held that the absence of any documentary evidence regarding an applicant's bona fide intent "is sufficient to prove that an applicant lacks such intention" under Section 1(b).

Winkelmann responded to Honda's interrogatories by stating that he "has not had activities in the U.S. and has not made or employed a business plan, strategy, arrangements or methods there," and "has not identified channels of trade that will be used in the United States." The only documents he produced comprised printouts from his website, copies of his "German, European and WIPO" trademark registrations, and correspondence with the USPTO. In opposing the summary judgment motion, Winkelmann submitted "statements of subjective intent" made by others on his behalf.

Both Winkelmann and Honda pointed to Winkelmann's website as showing how the mark is used in Europe, but Applicant did not identify "the portions of the record ... that demonstrate that he manufactures vehicles in Germany or elsewhere."

To raise a genuine issue of material fact, applicant must rely on specific facts that establish the existence of an ability and willingness to use the mark in the United States to identify its claimed “vehicles for transportation” at the time of the filing of the application. Applicant’s declarations of outside counsel merely state opinions and do not provide specific facts in support of his position.


The website printouts are not translated, but judging from the graphics, the mark seems to be used to identify car care packages or promotional material, not the vehicles themselves, and there is no evidence of a bona fide intent to use the mark in the United States as to the goods listed in the application. Any intention to use the mark may go to promotional services for dealerships, but not to "vehicles for transportation."

The Board distinguished this case from Lane, supra, which involved a Section 44(d) application based on an Austrian priority filing. There the Board found the applicant's evidence of bona fide intent to be sufficient: applicant's principal was engaged in the tobacco marketing business, including the export of tobacco to the United States under a prior mark, and had made attempts to obtain a U.S. licensee. In contrast, here "there is no evidence that applicant is engaged in the manufacture or sale of automobiles under the claimed mark."

And so the Board granted the motion for summary judgment and sustained the opposition.

TTABlog comment: Wow! This is big! I can see the lack-of-bona-fide-intent issue being raised in every proceeding involving a Section 44 or 66 application (not to mention Section 1(b)). Plaintiff's will jump onto this decision as a vehicle for success, while defendants will try to maneuver into the Lane lane.

But hold on a second. You will notice that in this case, the lack-of-bona-fide-intent ground was added by Honda after it took discovery and learned that Winkelmann had no documentation to substantiate his intent. That makes sense, right? How can one make the claim (in good faith) without first taking discovery.

But with a Madrid-based Section 66 application, there's a Catch-22. Under Rule 2.107(b), a notice of opposition filed against a Section 66(a) application may not be amended to add grounds for opposition. [This ban on post-filing additions to the opposition grounds stems from the Madrid Protocol’s requirement that all grounds for opposition be included in the notification of opposition when it is timely transmitted to WIPO. See Madrid Protocol Article 5(2)(a) and MPIA Section 68(c)(2)].

So what is the trademark practitioner to do when opposing a Section 66(a) application? Should one include every conceivable ground for opposition in the original pleading, including lack-of-bona-fide-intent, expecting to weed out later the unsupportable grounds? Would this be a violation of Rule 11? For an early discussion of this dilemma, see the Welch and Lamport Hammitte article entitled "TTAB Practice and the Madrid Rule Changes."

And if you are not tired by now of what I have to say, you might peruse Part II of my article "TTAB Year in Review (2008)," where I asked the following questions (after the Enyce and Sex Rod decisions): "What do these precedential decisions mean for trademark practitioners? Do we always collect documentation before filing an intent-to-use application? Do we ask whether the client has any? Do we ask ourselves how we will prove a bona fide intent should that issue arise?"

Text Copyright John L. Welch 2009.


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