Thursday, June 25, 2009

Recommended Reading: Sandra Edelman on Proving Bona Fide Intent

The latest issue of The Trademark Reporter includes Sandra Edelman's timely and informative article on bona fide intent, entitled "Proving Your Bona Fides - Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act," 99 Trademark Reporter 763 (May-June 2009).

Sandra Edelman

The Board's recent decision in Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) [precedential], brought the bona fide intent issue to the forefront for many trademark practitioners. [TTABlogged here]. There the Board sustained Honda's opposition to Herr Winkelmann's Section 44(e) application to register the mark V.I.C. for vehicles, ruling on summary judgment that Winkelmann had failed to establish the requisite bona fide intent to use his mark in the USA.

Ms. Edelman reviews the legislative history of the bona fide intent standard in seeking the meaning of "bona fide." She discusses how the issue may arise in ex parte and inter partes contexts and in civil litigation, and addresses several evidentiary matters, including burden of proof and the types of evidence, or lack thereof, that may have probative value in evaluating the issue. And she analyzes two particular situations in which an alleged bona fide intent may be challenged: multiple filings to register allegedly abandoned (or "legacy") brands, and multiple product listings in order to shield confidential marketing plans.

Challenges to bona fide intent may be expected to increase at the TTAB in view of the ENYCE, SEX ROD, and Winkelmann rulings issued by the Board in the last two years. And so Ms. Edelman's article is required reading for all trademark practitioners.

[This article is Copyright © 2009 the International Trademark Association, and is reprinted with the permission of The Trademark Reporter®, Volume 99 (May-June 2009).]

TTABlog note: Ms. Edelman points out that an opposer often does not have a sufficient factual basis for challenging bona fide intent until after discovery is taken, necessitating a motion to amend the notice of opposition.

She does not, however, address the question of what to do when challenging a Section 66 application, where amendment of the pleading is not allowed. I touched on this issue in my Winkelmann post, and I repeat my comment here:

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 the Madrid Protocol Implementation Act, Section 68(c)(2)].

So what should the trademark practitioner 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."

Text Copyright John L. Welch 2009.


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