Written by: Susan Neuberger Weller

Gap Inc. and Diane Von Furstenberg’s company DVF Studio have asked the federal court in the Southern District of New York to rule on whether the heart emoticon <3 can be protected as a trademark. Their declaratory judgment complaint filed against VeryMeri Creative Media Inc., 13 civ 8943 (December 17, 2013),  contends that VeryMeri cannot claim intellectual property rights in its stylized heart logo, which consists of or incorporates the <3 emoticon, since that logo/emoticon is “widely used in connection with apparel and related products,” since the stylized heart logo “is nothing more than a commonly used and well-known ‘emoticon’ or metacommunicative pictorial representation of a heart design,” and because “no one entity can be said to have the exclusive right over all forms of this [emoticon heart] design.” Continue Reading Can an Emoticon be Protected as a Trademark?

Written by: Susan Neuberger Weller

For many years now, the US Trademark Office has accepted trademark applications based upon a “bona fide intent to use” the applied-for mark on all the goods and/or to provide all of the services listed in the application at the time of filing.  Unlike in many other countries, a US application based on “intent to use” will not mature to registration until proof of use of the mark on all the goods and to provide all the services in the application has been filed with and accepted by the Trademark Office. The legislative history behind these statutory requirements makes clear that Congress wanted to prevent the warehousing of marks that no one had any real plans to use.

When an application is filed, the applicant must have an authorized representative sign, under penalty of criminal perjury, a declaration attesting to the fact that it has a “bona fide” intent to use the mark. The Trademark Office does not require proof of this intent at any point during the prosecution of the application. However, an application can be opposed by a third party with standing to do so on grounds that there was no “bona fide” intent to use the mark at the time the application was filed, rendering the application void. This is precisely what PRL USA Holdings, owner of the RALPH LAUREN POLO marks, did successfully in opposing two applications owned by Rich C. Young to register marks which PRL believed were confusingly similar to marks the company owned.

In these non-precedential opinions, the Trademark Trial and Appeal Board made clear that the “bona fide intent” required under the Trademark Act “must reflect an intention that is firm, though it may be contingent on the outcome of an event (that is, market research or product testing).”  Citing to prior case law, Section 45 of the Trademark Act, and the Senate Judiciary Committee Report for the relevant statutory provisions, the Board stated that there must be an intention to use the mark “in the ordinary course of trade” and not “merely to reserve a right in the mark.” Such an objective determination to be is made based upon all of the circumstances of each individual case.

The Board stated that one way of proving a lack of a bona fide intent is to demonstrate that an applicant has no documentary evidence, such as business plans, marketing or promotional activities, or evidence of discussions with manufacturers or licensees, to substantiate its allegations of intent.  Applicant Young’s responded to PRL’s discovery requests for evidence of activities involving the mark, that he was “in an intention to use status,” “did not have any business planning yet,” and  “did not have business activities yet.” In noting that it had “repeatedly found a lack of bona fide intent to use a mark by individuals who lack the demonstrated capacity to produce the goods identified in the application,” the Board held that the evidence in the cases demonstrated that Applicant only intended to “reserve a right in the mark” in case it was later approved for registration by the Trademark Office and that Applicant Young would only “at some unspecified future time begin developing a business.” Thus, PRL’s oppositions were sustained and both applications were refused registration.

So what is the take away here? First, coming up with a clever mark for a product or service that does not yet exist in any form other than in the imagination of an individual is not a proper candidate for an intent to use application. Thus, all applicants and their attorneys should ensure that there has been some demonstrated business efforts involving a mark before filing an application. For those applicants who might intend to use the mark only through a licensee, there should be some evidence to support this claim. Although the lack of intent will only surface if an application is challenged by a third party, the opposer need not have grounds to allege a lack of bona fide intent at the time the opposition is filed if it can, as PRL did, amend its application after discovery has uncovered no evidence to support claimed intent. Moreover, applications filed under Section 44 based upon a foreign registration are not immune from these requirements since all such applicants must also allege and declare under penalty of criminal perjury a bona fide intent to use the applied-for mark in US commerce despite the fact that proof of use need not be filed in order for the registration to issue.

Accordingly, although dreams can come true, be sure that clever ideas for a mark are backed up by evidence of plans to use the mark before filing an application.

Written by: Susan Neuberger Weller

 The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications.  In a recently issued precedential opinion, the Trademark Trial and Appeal Board has held, once again, that Section 10(a)(1) of the Act really means what it simply states, namely, that prior to filing proof of use at the Trademark Office, an intent-to-use application cannot be assigned “except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing an existing.” So why are registrations still being canceled for violating these terms?

  Continue Reading Oops! Assignment of Intent-to-Use Trademark Applications: Easy But Not Simple

Written by: Susan Neuberger Weller

When I think of the Hells Angels, what immediately comes to mind are  a notorious gang of men in leather on Harley-Davidson motorcycles, the 1960’s counterculture, and news reports of illicit activity. When I think of Toys “R” Us, what immediately comes to mind are Barbie® dolls, Candyland® board games, Fisher-Price® baby toys, and Lego® blocks. What doesn’t come to mind is Hells Angels suing Toys “R” Us for trademark infringement claiming that the toy retailer is selling toys bearing the Hells Angels federally registered “Death Head” logo without authorization. You can’t make this stuff up.

Continue Reading Hells Angels and Toys “R” Us Settle “Death Head” Trademark Litigation

Written by Christine M. Baker

If you’re familiar with the federal registration of trademarks and service marks in the United States, you know that U.S. trademark law allows an applicant to seek registration of a mark based on either actual use of a mark in interstate commerce  (15 U.S.C. Sec 1051(a)) or on a bona fide intent to use the mark in U.S. commerce (15 U.S.C. Sec 1051(b)).   While the option of filing an intent-to-use trademark or service mark application (ITU application) when a mark is not being used commercially is helpful, filers should think twice about whether they have the required “bona fide intent” to use a mark at the time of filing.  The absence of such an intent can render an application or registration invalid in an opposition or cancellation proceeding before the USPTO’s Trademark Trial and Appeal Board (TTAB).

The TTAB recently issued a precedential opinion sustaining an opposition against an ITU application given the applicant’s failure to submit documentary evidence establishing its intent to use the mark.  In Spirits International BV v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPT 2d 1545 (TTAB 2011), S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi (S.S. Taris) filed an ITU application to register the mark MOSKONISI for a variety of goods in several International Classes, including alcoholic beverages.  When the mark MOSKONISI was published for opposition purposes, Spirits International BV (Spirits) opposed registration of the mark on the grounds that the mark MOSKONISI was confusingly similar to the mark MOSKOVSKAYA for vodka in Spirits’ earlier-filed ITU application and that S.S. Taris lacked a bona fide intent to use the mark MOSKONISI in commerce in connection with alcoholic beverages.  S.S. Taris filed an answer denying Spirits Internationals’ allegations, but failed to produce documents responsive to Spirits’ request for production of documents that supported S.S. Taris’ bona fide intent to use the mark MOSKINISI.  Nor did S.S. Taris provide any information of its intent to use the mark in response to Spirits’ interrogatories seeking such information.  In fact, S. S. Taris asserted that it did not have any materials evidencing, reflecting or referring to its use or intended use of the mark MOSKONISI in connection with any alcoholic product, an authorized licensee of the mark in the United States, marketing plans for any alcoholic products or any documents evidencing the channels of trade through which products had been sold or through which S.S. Taris intended to sell products under the mark in the United States.  S. S. Taris also failed to answer an interrogatory asking what type of alcoholic products it intended to sell and its intended channels of trade.

In addressing the issue of S.S. Taris’ lack of intent, the TTAB determined that Spirits had the initial burden of demonstrating by a preponderance of the evidence that the applicant lacked a bona fide intent to use the mark as of the application filing date or during the opposition proceeding.  Since S. S. Taris failed to furnish any documentary evidence regarding its intent to use the mark MOSKONISI on alcoholic beverages and affirmatively stated that no such documents existed during the discovery phase of the proceeding, the TTAB held that Spirits satisfied its initial burden of proof.  The burden then shifted to S. S. Taris to present evidence that would adequately explain or outweigh its failure to provide such documentary evidence.   Since S. S. Taris did not submit any evidence in the proceeding or file a brief, the TTAB concluded that the applicant failed to rebut Spirits’ evidence.  Accordingly, the TTAB sustained the opposition on the ground that S. S. Taris lacked a bona fide intent to use the mark MOSKONISI for the identified goods.   

You’ve probably heard the mantra at least one point in your life that “just because you can do something, doesn’t mean you should.”  This mantra can be applied to the filing of intent to use trademark applications with the USPTO.  Although it’s great to have the option of filing an ITU application, an ITU application should not be filed if you simply want to reserve a mark.  Rather, a Section 1(b) application should only be filed if you honestly intend to use a mark in the future.  In that case, you should document all steps taken that prove your bona fide intent to use the mark in commerce before you file an ITU application and leading up to the launch of your products or services, such as: 

            ● Notes from marketing meetings about the mark and new products or services 

            ● Marketing plans and test-marketing efforts, i.e., consumer surveys

            ● Executive feedback on the mark and a  list of company personnel

                involved in the selection of  the mark

            ● Trademark search reports

            ●  Expenses incurred with the development of logos, product packaging,

                advertisements and prototypes;

            ●  Domain name registrations and web site development, and

            ● Steps taken to use mark in commerce, i.e., obtain suppliers, distributors,

                government approval and licensees.

The S.S. Taris decision is a warning to brand owners that they should develop a system for memorializing their good faith intent to use a trademark.  The failure to do so can be fatal to the validity of an ITU application or a registered mark in opposition and cancellation proceedings before the TTAB. Federal courts also may adopt the TTAB’s reasoning in the future so keeping a centralized file of all documents relating to one’s bona fide intent could be very useful if a brand owner finds itself involved in a trademark infringement action.  Please note, however, that retaining documents establishing one’s bona fide intent to use a mark does not eliminate the need to do a full trademark search, which should be done before an ITU application is filed with the USPTO.