Frankfurt Kurnit Klein & Selz

October 28th, 2016

Lack of Documentary Evidence Sinks Two Recent Trademark Applications

Business owners do not have to wait until they are actually using a trademark in commerce before seeking to register it with the Trademark Office. Instead, they may file an intent-to-use application by certifying that they have a good faith, bona fide intent to use the mark in commerce. But if another party questions a business owner's intent — when the application is published for opposition or after registration —  the Trademark Trial and Appeal Board will require documentary evidence showing the bona fide intent to use. Lack of documentary evidence can kill an application or a registration — and set a business plan back. That's what happened to two recent applicants. Here's a summary.

In The Trustees of the Bonnie Cashin Foundation v. Stephanie Day Lake and Heineken Asia Pacific Pte. Ltd. V. Jonathan A. Claypool, the Board reiterated that the test for bona fide intention includes whether there is documentary evidence of an intent to use. If an applicant cannot produce documentary evidence or explain why there is no such documentation, the Board will deny the application for lack of bona fide intent.

In Heineken Asia, the Board found no intention to use the mark TIGER SHARK on beer where the applicant admitted that he did not have any written plans to use the mark, produce the goods, or advertise the goods; he did not have any labels or packaging, marketing materials, intended consumers, or written business plans; and he did not have any employees or spend any money on the creation of the goods. The applicant's "simple mental memorized" business plan, research on the making of beer, and conducting of trademark searches and filing of trademark applications were insufficient to constitute a bona fide intention to use. In fact, the applicant's submission of multiple applications to register different trademarks, according to the Board, indicated that he did not specifically intend to use TIGER SHARK.

In Bonnie Cashin, the Board relied on similar facts to find no bona fide intention. The Board held that the applicant failed to produce any documents discussing her intention to use the trademark BONNIE CASHIN; failed to show that she had taken any steps to use the mark in commerce; and failed to determine the channels of trade, conduct consumer research, or develop any product designs or mockups. Although the applicant did produce some documents showing an effort to commercialize the mark, those documents were not persuasive. Some of those documents showed effort made by the applicant while she was still employed by the opposer and, so, represented the opposer's intent, not the applicant's. Other documents were not persuasive because they were dated after the application was filed, and so could not show the applicant's intent at the time the application was filed.

What these decisions mean

These decisions highlight the importance of documentary evidence showing a plan to use a trademark in commerce when the trademark application is filed. A failure to have this evidence can result in a trademark application being denied or a registration being cancelled. Even the most thorough business plan may not be enough. The evidence should be written and should reveal concrete steps taken by the applicant toward commercializing the trademark.

If you have questions about the Heineken Asia and Bonnie Cashin cases, or about other trademark matters, please contact Kimberly Maynard at (212) 705 4853 or kmaynard@fkks.com or any other member of the Frankfurt Kurnit Trademark & Brand Management Group.