So You Think You Have An Intent To Use, Do You?

The recent TTAB precedential opinion in Honda Motor Co., Ltd. v. Friedrich Winkelmann renews established teaching concerning an intent to use trademark application. That is, the applicant must truly have a bona fide intent to use the mark on all listed goods at the time of the application filing with the PTO. It is not enough for an applicant merely to subjectively believe that it may use the mark at some time on some goods.

In the Honda case, Friedrich Wilkelmann filed an application for the mark V.I.C. for “vehicles for transportation” in Class 12, including “motor propelled and self-propelled vehicles for use on land and on water and motor propelled and glider aircraft; parts used in vehicles for transportation on land, air or water, namely, motor propelled and self-propelled vehicles for use on land and on water and motor propelled and glider aircraft.” Filing was made under Section 44(e) based on the applicant’s German registration. In the application, the applicant made a declaration claiming a bona fide intent to use the mark in commerce in the U.S. on all of the listed goods.

Honda filed an opposition, claiming likelihood of confusion with Honda’s CIVIC mark for automobiles and further claiming that the applicant lacked a bona fide intent to use the mark in commerce on all the listed goods.

The TTAB pointed out that an applicant who applies for a mark based on Sect. 44(e), claiming priority based on foreign registration, must verify that it has a bona fide intent to use the mark in U.S. commerce on all listed goods. The TTAB considers the same sort of objective, good faith intent as applied to a Sect. 1(b) application based on intent to use. But here, the applicant acknowledged during discovery that it had not developed any “business plan, strategy, arrangements or methods” to use the mark on the indicated goods in the U.S., and had not identified channels of trade to be used in the U.S. Indeed, the applicant provided no evidence to establish its objective bona fide intent to use the mark on the indicated goods in the U.S.

The TTAB set forth the clear rule relating to the level of “intent” for an application under 1(b) or 44(e): “To raise a genuine issue of material fact, applicant must rely on specific facts that establish the existence of an ability and willingness to use the mark in the United States to identify its claimed ‘vehicles for transportation’ at the time of the filing of the application.” [Emphasis added.] To satisfy this requirement, the applicant must have more than an interest in wanting to use the mark on goods at some undefined time in the future and in some undefined manner. There must be an objectively verifiable intent to use the mark on all listed goods at the time of the filing of the application.

This requirement for an intent to use under 1(b) or 44(e) requires a cautious and thoughtful approach by both U.S. and foreign applicants. Indeed, the level of care must be heightened for foreign applicants who may be more accustomed to applying for trademark registration in foreign countries under very broadly worded class descriptions, covering everything possible within the class. The U.S. system does not permit a broad class description but the applicant is required to specifically define the types of goods “namely” within the class. As such, the broad foreign application may become a hindrance to the 44(e) foreign applicant, who must proceed with care to comply with the objective intent to use requirements of U.S. law.

Failure to do so may cause a result similar as that in the Honda case -- the opposition was allowed and the registration was refused.