Westchester Women's Bar Association

Failing to Prove a Bona Fide Intent to Use Can Be Fatal

In a recent precedential Board decision, the Opposition filed by Nestle was sustained based on the Applicant being unable to provide evidence showing documentation for a bona fide intent to use the mark NESPORT with the identified goods in U.S. commerce. See Societe des Produits Nestle S.A. v. Candido Vinuales Taboada, Opposition No. 91232597 (August 5, 2020) [precedential]. In this case, the Applicant based its application on Section 66(a) of the Trademark Act. Section 66(a) mandates that when an Applicant files its application with the International Bureau (“IB”) of the World Intellectual Property Organization (“WIPO”), requesting extension of protection to the U.S. it must include a declaration of bona fide intent to use the mark in U.S. commerce. For more on the 66(a) requirements, see our web page entitled, Holders of International Trademark Registrations Extending Protection To The U.S. See also, TMEP §1904.01(c).

The Board in this case reminds all Applicants designating a 66(a) filing basis that the Applicant must be able to produce documentation that demonstrates its intent to use the mark with the identified goods and services. For more on this topic, see our web page entitled, How Does An Applicant Prove A Bona Fide Intent To Use A Trademark In Commerce? In this case, Applicant was seeking to register the mark NESPORT for multiple products in classes 5, 30, and 32. It is important to note that the law requires an Applicant to have a bona fide intent to use the mark in U.S. commerce as of the application filing date. Lack of a bona fide intent to use the brand with the identified goods or services is a valid ground for challenging a request for extension of protection under §66(a) of the Trademark Act. Thus, cases under Section 1(b) of the Trademark Act may also be used to challenge 66(a) applications. See Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660, 1662 (TTAB 2009).

The law requires that the Opposer demonstrate by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified goods or services. If the Applicant cannot produce documentary evidence then this is objective evidence that the Applicant does lack the requisite intent. Research in Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926, 1930 (TTAB 2009). If the Opposer meets its burden, then the Applicant may try to rebut the prima facie base by showing evidence of intent to use the mark in U.S. commerce.

The Applicant produced the following documents to support its case of a bona fide intent to use: (1) the U.S. trademark application for the proposed mark NESPORT; (2) domain name registrations around the world; (3) a website at nesport.com; and (4) litigation papers from a matter involving the mark pending in a court in Australia. However, there was no advertising materials presented for the mark, no documents to prove money was spent on promoting the brand, no communications or agreements with suppliers, no communications from any U.S. retailers to sell the product, no designs for anticipated packaging, and no proof of attending trade shows or meetings with buyers.

In addition, Opposer had evidence that searches were conducted in social media for NESPORT branded goods, and the only matter discovered was a Facebook® page showing sports clothing and not the goods identified in classes 5, 30 & 32. Moreover, the most recent post was from December 2017. The Opposer’s search online did not yield evidence of the branded goods identified in the application. Any activities to use the mark must be contemporaneous with the filing of the trademark application. See Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581 (TTAB 2008). The Board has stated that the strongest evidence of a bona fide intent to use will have a basis in activities occurring prior to the filing date of the trademark application, or at least at the time of filing the trademark application. See Swiss Grill Ltd., John Hartwig, Christopher Hartwig and Matthew Hartwig, v. Wolf Steel Ltd., 115 USPQ2d 2001 (TTAB 2015) [precedential].

The Board discussed the fact that the Application was filed in 2016, and yet the discovery responses served in 2017 indicated that there had been no promotional materials available, no communications with manufacturers or distributors, no commitments from U.S. retailers to carry the branded products, no documents showing regulatory approval for the alcoholic or pharmaceutical goods, and no documents showing designs for packaging or labeling. In the end, the Board held that the Applicant lacked the bona fide intent to use the mark NESPORT in commerce in 2016 when the application was filed and the opposition was sustained. If you have questions about the types of actions that should be taken contemporaneously with the filing of the trademark application when declaring a bona fide intent to use in commerce, please contact the firm for a courtesy consultation.

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