Although this case is from 2009, it is still highly relevant and useful to clients who regularly expand or are looking to expand their trademark portfolios to foreign jurisdictions.
————————–
A 2009 U.S. Trademark Trial and Appeal Board (the “board”) decision broke down the intent-to-use requirement under Lanham Act’s Section 44(e), which allows for foreign registrations as the basis for U.S. trademark registration. In Honda Motor Co., Ltd. v. Winkelmann, the Board concluded that, in filing an intention to use (ITU) application, Section 44(e) requires more than the foreign registration of a mark to demonstrate a good faith bona fide intent to use that mark in U.S. commerce. It also requires objective evidence that the applicant intended to use the mark at the time of filing the application. Mere statements of subjective intent and a foreign registration alone are insufficient.
Filing an ITU application based on a foreign registration, however, does not require actual use of the mark in U.S. commerce. Rather, the applicant must produce evidence, such as a written business plan or report, contracts, or records of ongoing discussions or promotional activities, to demonstrate a bona fide intent to use the mark. Where no such evidence exists, the applicant must explain why no documents exist and offer other evidence demonstrating an intent. Otherwise, the applicant risks denial of his application or loss of the pending registration.
To avoid this dilemma, before filing for U.S. trademark registrations based on foreign registrations and use, the applicant should be prepared to produce written evidence of a bona fide intention to use the mark in U.S. commerce.