Trademark Owners: Take Caution

The United States District Court for the Southern District of New York recently ruled that an applicant must delete all goods from its trademark registration where it could not prove that it had a corresponding “bona fide intent to use the mark in commerce” in association with the identified goods.

The United States District Court for the Southern District of New York recently ruled that an applicant must delete all goods from its trademark registration where it could not prove that it had a corresponding “bona fide intent to use the mark in commerce” in association with the identified goods. The dispute concerned the use of the trademark SANDRO by Sandro Andy, S.A. (“Sandro Andy”).

Sandro Andy is a company that designs, manufactures and sells clothing and accessories under the SANDRO trademark. The SANDRO trademark registration identified more than 250 items associated with the mark. All trademark applications in the United States must be based on use in commerce or an intention to use the mark in commerce – even trademark applications based on foreign applications, foreign registrations or international registrations (although an applicant relying on a foreign registration, a foreign application or an international registration for an extension of protection does not need to actually use the mark in commerce in the United States prior to obtaining a trademark registration). The opposing party, Light, Inc., claimed that Sandro Andy lacked a bona fide intent to use the SANDRO mark in commerce in connection with all of the goods listed in the trademark application.

The lack of a bona fide intent to use the mark in commerce for some or all of the listed goods in  a trademark registration is a valid claim in a petition to cancel a registered mark. This claim arose because the SANDRO trademark registration was overly broad. The registration listed hundreds of goods in several International Classes. Sandro Andy conceded that it only used the mark in connection with Class 25, apparel. Sandro Andy was required to make valid representations to the U.S. Patent and Trademark Office to obtain the registration at issue. At each step of the registration process, Sandro Andy faced significant penalties for misleading the Trademark Office. As a result of these misrepresentations, the court directed Sandro Andy to amend its registration and delete those goods and classes that were not in use in United States commerce. Fortunately for Sandro Andy, a lack of bona fide intent associated with some of the goods is not necessarily a reason to deem the entire registration void. In other words, the lack of a bona fide intent for some of the goods will not “infect” the remaining goods where there was a bona fide intent and will not render the entire registration void. The registration was allowed to be maintained after the erroneous goods not in use were deleted.

Trademark owners are cautioned that an overly broad application, registration or request for an extension of protection increases the chances that an opposer can prove by a preponderance of the evidence that there was a lack of bona fide intent to use the mark in commerce on or in association with all of the goods and services listed in the trademark application. Applications and registrations with pages of diverse goods in multiple classes raise suspicion  at the very least, if not invite an opposition or cancellation claim. Applicants and registrants must take caution only to list goods and services in trademark applications and registrations that it is using in commerce or will reasonably use in commerce. All other goods and services should and must be deleted. If the applicant or registrant does not do so, the entire application or registration could be vulnerable in a trademark opposition or trademark cancellation.

Foreign applicants are particularly vulnerable to a claim of a lack of bona fide intent. Foreign applicants often base the United States application on foreign trademark applications or registrations where no use or intention of use is required in the country of origin. These types of applications and registrations often include long lists of goods and/or services for which the mark in question has never or will never be used, anywhere. A foreign owner may have a difficult time producing documentation or other evidence that would substantiate its stated bona fide intention to use its mark in the United States.

What is a bona fide intent? “Bona fide” means a fair, objective determination of the applicant’s intent based on all the circumstances. The applicant’s bona fide intention must reflect the good faith circumstances surrounding the intended use. The use should not be “token use” of a mark simply to provide a basis for an application. The determination of whether an applicant has a bona fide intention to use the mark in commerce is to be a fair, objective determination based on all the circumstances. An applicant’s mere statement of subjective intention, without more, would be insufficient to establish the applicant’s bona fide intention to use the mark in commerce.

Examples indicative of objective circumstances that may show a lack of bona fide intent:

  • Applicant filing many intent-to-use applications to register the same mark for many products
  • An excessive listing of goods, which may show a lack of a reasonable intent to use the mark in association with all of the listed goods
  • Many intent-to-use applications for a variety of desirable trademarks intended to be used on one product
  • Trademark applications listing the entire International Class heading
  • Many intent-to-use applications incorporating descriptive terms relating to one new product
  • Multiple trademark applications for the same mark filed in succession after the previous trademark application lapses because no timely declaration of use has been filed
  • An excessive number of intent-to-use applications to register marks that ultimately were not actually used
  • Applications unreasonably lacking in specificity in describing the proposed goods.

Trademark owners should exercise caution to only identify goods and services where there is an associated bona fide intent to use the mark in commerce in the United States. Whenever possible, these applications should be supported by documentary evidence supporting the goods and services.

This evidence should be maintained in the case file during the prosecution of the trademark application. Moreover, this information should be maintained after the trademark registration issues so that it can be used in any subsequent trademark registration cancellation or infringement action.

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