TTAB takes hard stance on good-faith intent-to-use requirement

United States of America
In Honda Motor Co v Winkelmann (Opposition 91170552, April 8 2009), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has granted summary judgment to the opponent and denied trademark registration to a foreign applicant on the grounds that the latter lacked the requisite good-faith intent to use the mark in US commerce for the goods identified in the application.
Friedrich Winkelmann applied to register the trademark VIC for land, air and water vehicles and parts for vehicles in Class 12 of the Nice Classification under Section 44(e) of the Lanham Act. Section 44(e) allows a foreign applicant to register in the United States a mark that has been registered in the applicant’s country of origin without first showing actual use in the United States, so long as the applicant states under oath that it has a good-faith intent to use the mark in US commerce.
In 2006 Honda Motor Co opposed Winkelmann’s application, alleging a likelihood of confusion between VIC and Honda’s CIVIC mark. Following discovery, Honda amended its notice of opposition to add, as a basis for the opposition, Winkelmann’s lack of a good-faith intent to use the VIC mark in commerce for the goods listed in the application. Honda argued that Winkelmann had failed to provide any objective evidence that he possessed good-faith intent to use the mark at the time the application was filed (the operative date for determining the existence of a good-faith intent).
Specifically, Honda argued that Winkelmann had failed to provide any documentary evidence of intent, such as:
  • current business plans;
  • ongoing development discussions;
  • promotional activities; or
  • any other objective corroboration of his claimed good-faith intent to use the mark in the United States.
In support of its argument, Honda submitted Winkelmann’s written responses to various Honda discovery requests, including interrogatory responses in which Winkelmann stated that he had no activities in the United States and had no business plan or strategy in place to transact business there. Honda also pointed out that Winkelmann had failed to provide any adequate explanation as to why no such documentation existed. In response, Winkelmann argued that evidence of his good-faith intent could be demonstrated by his non-US registrations (which he did not translate) and claimed use of the VIC mark on a website in German (which he also did not translate). Winkelmann also relied on statements of subjective intent submitted by his counsel, to which the TTAB gave little weight.
Agreeing with Honda, the TTAB granted summary judgment on the issue of Winkelmann's lack of the requisite intent and refused registration on that basis. In reaching its decision, the TTAB stressed that an applicant’s subjective claim of intent is insufficient. The focus of the analysis must be whether the evidence of record demonstrates an objective, good-faith basis for finding such intent. Absent documentary evidence of intent, an applicant is required to present other facts to explain or outweigh the absence of documentary evidence. In the present case, the TTAB found that Winkelmann had failed to provide any objective documentation or facts demonstrating an intent to use the mark in the United States at the time the application was filed.
While the issue of good-faith intent has been addressed in a few recent TTAB decisions, Honda Motor is the first case involving a Section 44(e) application rather than a Section 1(b) intent-to-use application. It is also the first one decided in favour of the opponent that does not, on its face, have facts suggesting that the applicant was aware of the opponent’s mark and intentionally selected a mark that was the same or similar.
The Honda Motor decision provides a strong warning to non-US trademark applicants whose home countries may have vastly different requirements regarding use of or intent to use trademarks as a prerequisite for registration. In addition, even though the decision in Honda Motor concerned an applicant who relied on a foreign registration to support a US filing, the TTAB specifically noted that the same objective, good-faith standard applies to any party filing a trademark application based on a good-faith intent to use.
As with other applicants in the recent cases on this issue, the applicant in Honda Motors offered no objective evidence demonstrating an intent to use the mark in the United States in conjunction with the goods listed in the application. The TTAB’s decisions have thus provided limited guidance regarding the extent and the specific nature of the evidence that the TTAB will require to support a claim of good-faith intent. This remains an open question.
However, it is clear that any trademark applicant filing under any section of the Lanham Act that requires an asserted good-faith intent to use must be diligent in making sure that, if challenged, it will be in a position to provide objective evidence in support of its intentions to use the mark. A subjective intent, absent documentation or other corroborating evidence, will not be sufficient to withstand a challenge.
Carla B Oakley and Anita B Polott, Morgan Lewis, San Francisco and Washington DC

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