LAKC - 9th Annual IP CLE: US TM Apps and Registrations based on - PDF document

2/23/2017 LAKC - 9th Annual IP CLE: US TM Apps and Registrations based on Foreign Apps and Registrations – A Review of Issues associated with Identifications and Use Kent Erickson and Timothy Feathers Two Filing Bases for US Owners • A US trademark owner may file an application to register based on: – actual use in commerce (Section 1(a)) of the Lanham Act. – “ bona fide intent-to-use” (Section 1(b)) - but a registration will not issue until proof of use is provided to the USPTO. 2 Five Bases for Filing for a Foreign Owners • The owner of a foreign TM application or registration may apply in the U.S. based on: – 44 (d) of Lanham Act (foreign application per the Paris Convention) – 44 (e) (foreign registration per Paris Convention) – 66 (a) of Lanham Act per Madrid Protocol (All without the need to allege or prove use of the mark in commerce prior to registration.) 3 1

2/23/2017 Bases for US Registration – Foreign Owners • A foreign trademark owner may also file a Section 1(a) use-based application, or a Section 1(b) intent-to-use application, the latter basis requiring use in commerce for registration. 4 Bases for US Registration – Foreign Owners – Priority Claims • Owner of foreign app/registration may be entitled to claim foreign filing date in U.S.: – The Section 44(d) application must be filed within six months of the foreign application upon which it is based, and may claim the priority of that foreign filing date. – A Section 66(a) request for extension of protection under the Madrid Protocol may also claim priority within six months of the date of the filing that provides the basis of the priority claim. 5 Minimum Requirement: Intent to Use Always Required to Support U.S. Registration • Applicants for 44 (e) and 66 (a) registrations are required to declare bona fide intent to use the mark in commerce on all identified goods and services in the U.S. as part of the application process. – 15 U.S.C. Sec. 1141 (h) and (f), and 1126(e); T.M.E.P. Sec. 1008. 6 2

2/23/2017 Issue: Clearing marks in the face of “excessive identification” in 44/66 applications and registrations 7 8 9 3

2/23/2017 Basis for Challenging “Excessive Identification” • Application Phase: – Lack of bona fide intent to use in U.S. at time of filing. • Following Registration: – Lack of bona fide intent to use in U.S. at time of filing. – “Abandonment” • With benefit of presumption after 3 years of non-use following registration date. • Without benefit of presumption any time before that. 10 “Abandonment” After 3 Years of Non-Use • Petitioner has “evidentiary boost” under Section 45 of Lanham Act – prima facie evidence of abandonment. – 15 U.S.C. Sec. 1127 • This statutory presumption of abandonment shifts the burden of production to the mark owner to come forward with evidence of intent to resume use of mark within reasonable time. • 44/66 registrations – time will not run prior to date of registration. – Imperial Tobacco Ltd. v. Philip Morris Inc ., 899 F.2d 1575, 14 USPQ2d 1390 (Fed, Cir. 1990); Dragon Bleu (SARL) v. VENM, LLC , Opp. No. 91212231, 112 U.S.P.Q.2d 1925 (T.T.A.B. 2014) 11 “Abandonment” After 3 Years of Non-Use • The Board sustained a petition for cancellation of OPGI's registration (issued under Section 44(e)) for the service mark TREASURYNET for "providing information on financial information, namely corporate treasury and loan information and commercial real estate property management information via a global computer network," finding that OPGI had used the mark only internally and had therefore abandoned the mark. – City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668 (TTAB 2013) [precedential]. 12 4

2/23/2017 “Abandonment” Prior to 3 Years of Non-Use • It has been done, primarily in the context of announced branding/name changes. • (Kitty Clover – Hiland) • Unlikely in 44/66 cases absent similar circumstances. • “Lack of Intent to Use” more likely basis for cancellation during this “liminal state.” 13 Lack of Bona Fide Intent to Use in U.S. at Time of Application • All applications filed with a claim of bona fide intent to use a mark in U.S. commerce are void ab initio , and any registration is vulnerable to cancellation, when the applicant or registrant lacks such bona fide intent. – SaddleSprings, Inc. v. Mad Croc Brands Inc. , 104 U.S.P.Q. 2d 1948 (T.T.A.B. 2012) and Sandro Andy S.A. v. Light, Inc ., No. 12 Civ. 2392 (HB) (S.D.N.Y., Dec. 27, 2012). 14 Proof of Lack of Bona Fide Intent to Use • To withstand a challenge after prima facie case, it comes down to documentation. – Discovery responses revealed no documents regarding intended use, no promotional or marketing materials, and no marketing plans. – Spirits International B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi , 99 U.S.P.Q. 2d 1545 (T.T.A.B. 2011). – Evidence establishing bona fide intent or lack thereof must be objective. TTAB sustained opposition where applicant lacked documentation or other objective evidence of taking active steps toward use of its mark in the United States, which "outweigh[ed] any subjective (or even sworn) intent to use the mark.” – L'Oreal S.A. v. Marcon , 102 U.S.P.Q. 2d 1434 (T.T.A.B. 2012). 15 5

2/23/2017 Proof of Lack of Bona Fide Intent to Use • To withstand a challenge after prima facie case, it comes down to documentation. – Honda prevailed on summary judgment based on lack of any documentary evidence created prior to the filing date to support the alleged intent to use (44 (d) case). – Honda Motor Co., Ltd. V. Winkelmann , 90 USPQ2d 1660 (TTAB 2009) [precedential]. 16 And now, for something completely different… 17 STUDY FINDS MOST DECLARATIONS OF CONTINUED USE INNACCURATE • 2012 Pilot Program to Assess Accuracy and Integrity of Register as to Actual Use • 500 Registrations queried for additional proof • 35% - Some goods/services deleted • 16% - No response – registration canceled • = 51% unable to verify previously claimed use under Section 8 or 71 • 84% ultimately received notices of acceptance 18 6

2/23/2017 Post Registration Proof of Use Report Deletions/Cancellations/Acceptances/Inaccurate Use Claims by Basis for Registration Percentage of Percentage of Percentage of Percentage of Basis for Registrations Registrations Registrations Registrations Registration Selected for Selected for Selected for the Selected for the the Pilot the Pilot Pilot Receiving Pilot Unable to Deleting Receiving Notices of Verify Goods/Services Notices of Acceptance Previously Queried Under Cancellation (Including for a Claimed Use in the Pilot Narrowed Section 8 or 71 Scope of Declarations Goods/Services) Section 1(a) 28% 17% 83% 45% Section 58% 7% 93% 65% 44(e) Section 57% 14% 86% 71% 66(a) Combined 56% 12.5% 87.5% 69% Section 1(a) and 44(e) 19 Auditing Decl. of Cont. Use Changes to 37 CFR 2.161(h) & 7.37(h) • Effective Date: February 17, 2017 • Audit Program: – Up to approximately 10% of § 8 and 71 Declarations – Will request proof of use for 2 more goods/services per class in 1 st action – Thereafter, may require proof for more goods/services – If only one good/service – may require multiple specimens if first unacceptable to show actual use 20 Auditing Decl. of Cont. Use Changes to 37 CFR 2.161(h) & 7.37(h) • Audit Program (continued) • 6 months to respond • USPTO will cancel goods from registration if acceptable specimens not submitted • USPTO will cancel entire registration if no response filed by later of 6 months from action or before the end of statutory period to file §8 or 71 declarations 21 7

2/23/2017 Rule Changes for Decl. of Cont. Use 37 CFR 2.161(h) & 37 CFR 7.37(h) • 2.161(h) - The Office may require the owner to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 8 of the Act. • 7.37(h) - same for declarations under §71 for registered extensions under Madrid Protocol 22 Post Registration Amendments of Goods/Services To Reflect Changes in Technology • Technology Evolution Pilot Program • Allow amendments to identifications of goods/services in registrations that would otherwise be beyond the scope of the current identification, • Permitted where deemed necessary because evolving technology has changed the manner or medium by which the underlying content or subject matter of the identified products and services are offered for sale or provided to consumers. 23 Technology Evolution Pilot Program • Examples of acceptable amendments: – “Phonograph records featuring music” in Class 9 to “Musical sound recordings” in Class 9 – “Downloadable software for use in database management” in Class 9 to “Software as a service (SAAS) services featuring software for use in database management” in Class 42 24 8