Verna Law's guest appearances

Verna Law

Law & Business

Law & Business Video

LeBron James

Anthony Verna

OwlTail

Intent-to-use trademark applications.An intent-to-use trademark application requires some otherevidence, if it is challenged in court, to show that the applicant has a bonafide intent to use the mark in commerce. Why?“Because a bona fide intent to use the mark in commerce is astatutory requirement of a valid intent-to-use trademark application underSection 1(b), the lack of such intent is a basis on which an opposer maychallenge an applicant's mark.” M.Z. Berger &amp; Co. v. Swatch AG, 787 F.3d1368, 114 USPQ2d 1892, 1898 (Fed. Cir. 2015). Applicant's intent must be"firm," “demonstrable” with "objective evidence of intent"and "more than a mere subjective belief.” Id. at 1897-1898; SwissGrill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2008 (TTAB 2015).The court make an objective determination whether Applicanthad a bona fide intention to use the mark in commerce at the time of filing herapplication, and, in doing so, consider the totality of the circumstances. SeeM.Z. Berger &amp; Co., 114 USPQ2d at 1898; Swiss Grill Ltd., 115 USPQ2d at2008. Opposer bears "the initial burden of demonstrating by apreponderance of the evidence that applicant lacked a bona fide intent to usethe mark on the identified” services. Boston Red Sox Baseball Club LP v.Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008). Opposer may meet this burden byestablishing that there is an "absence of any documentary evidence on thepart of [Applicant] regarding such intent." Commodore Electronics Ltd. v.CMB Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993). If Opposer meets its burden, Applicant may "elect totry to rebut the opposer[‘s] prima facie case by offering additional evidenceconcerning the factual circumstances bearing upon [her] intent to use [her]mark in commerce." Commodore Electronics Ltd., 26 USPQ2d at 1507n.11. However, Applicant's "mere statement of subjective intention,without more, would be insufficient to establish applicant's bona fideintention to use the mark in commerce." Lane Ltd. v. Jackson Int’lTrading Co., 33 USPQ2d 1351, 1355 (TTAB 1994).Here is a lightly-edited transcript of the video:Most of my clients who come to me for a trademarkapplication are not using the trademark yet. It's a good idea of course, tostart at the very beginning with what we call an intent-to-use trademarkapplication. That trademark not being in use will not register with the Patentand Trademark Office, if it passes muster, until it is in use in commerce. But,while products are being developed, while finalizations are being made, prototypesare being created. A lot of companies want to make sure that that trademark is,is at least reserved in the Patent and Trademark Office if the mark is notregistered yet. There could be a little snag along the way that a lot ofbusinesses don't really think of and that is if an intent-to-use trademarkapplication is challenged by a third party during the review process. If that mark is not in use yet and there are no business plans, then that markcould actually not really be considered an intent-to-use application. In other words, the trademark applicant must have what wecall a bona fide intent to use the trademark in commerce or else it's notreally considered an application under the statutory requirements. If a thirdparty is challenging a mark, we need to make sure that we've got a little bitmore than just that trademark application. As I said, a lot of businesses haveprototypes, have business plans, and I even discussed the importance ofbusiness plans in an earlier blog. Any piece of evidence that discusses that ability to takethe trademark and put it into commerce without those business plans, withoutthose prototypes, without whatever those first iterations are, is needed. Anintent-to-use application isn't actually qualified as an intent-to-useapplication without that evidence. If we're going to start at the beginning, and that is, ofcourse,

Intent-to-use trademark applications. An intent-to-use trademark application requires some other evidence, if it is challenged in court, to show that the applicant has a bona fide intent to use the mark in commerce. Why? “Because a bona fide intent to use the mark in commerce is a statutory requirement of a valid intent-to-use trademark application under Section 1(b), the lack of such intent is a basis on which an opposer may challenge an applicant's mark.” M.Z. Berger &amp; Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1898 (Fed. Cir. 2015). Applicant's intent must be "firm," “demonstrable” with "objective evidence of intent" and "more than a mere subjective belief.” Id. at 1897-1898; Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2008 (TTAB 2015). The court make an objective determination whether Applicant had a bona fide intention to use the mark in commerce at the time of filing her application, and, in doing so, consider the totality of the circumstances. See M.Z. Berger &amp; Co., 114 USPQ2d at 1898; Swiss Grill Ltd., 115 USPQ2d at 2008. Opposer bears "the initial burden of demonstrating by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified” services. Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008). Opposer may meet this burden by establishing that there is an "absence of any documentary evidence on the part of [Applicant] regarding such intent." Commodore Electronics Ltd. v. CMB Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993). If Opposer meets its burden, Applicant may "elect to try to rebut the opposer[‘s] prima facie case by offering additional evidence concerning the factual circumstances bearing upon [her] intent to use [her] mark in commerce." Commodore Electronics Ltd., 26 USPQ2d at 1507 n.11. However, Applicant's "mere statement of subjective intention, without more, would be insufficient to establish applicant's bona fide intention to use the mark in commerce." Lane Ltd. v. Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994). Here is a lightly-edited transcript of the video: Most of my clients who come to me for a trademark application are not using the trademark yet. It's a good idea of course, to start at the very beginning with what we call an intent-to-use trademark application. That trademark not being in use will not register with the Patent and Trademark Office, if it passes muster, until it is in use in commerce. But, while products are being developed, while finalizations are being made, prototypes are being created. A lot of companies want to make sure that that trademark is, is at least reserved in the Patent and Trademark Office if the mark is not registered yet. There could be a little snag along the way that a lot of businesses don't really think of and that is if an intent-to-use trademark application is challenged by a third party during the review process. If that mark is not in use yet and there are no business plans, then that mark could actually not really be considered an intent-to-use application. In other words, the trademark applicant must have what we call a bona fide intent to use the trademark in commerce or else it's not really considered an application under the statutory requirements. If a third party is challenging a mark, we need to make sure that we've got a little bit more than just that trademark application. As I said, a lot of businesses have prototypes, have business plans, and I even discussed the importance of business plans in an earlier blog. Any piece of evidence that discusses that ability to take the trademark and put it into commerce without those business plans, without those prototypes, without whatever those first iterations are, is needed. An intent-to-use application isn't actually qualified as an intent-to-use application without that evidence. If we're going to start at the beginning, and that is, of course,

Verna Law Video Blog 12: Intent to Use Trademark Applications: Business Plans Needed

When I first settled a trademark infringement suit for about $20,000, I thought I did a great job.  The client did have to change the trademark and did have to send the excess product to a company to destroy the products, but I still thought it was a great settlement when in defense.  Recently, however, there are a pair of settlement agreements for separate lawsuits that we have attained here at Verna Law.For one client, being sued in Federal District Court for trademark and trade dress infringement, his settlement is sterling:Paying the Plaintiff in the case no money!120 days to finish selling current inventory.60 days to establish a new domain.240 days for the old domain to redirect to the new domain.So, here is a client who, after a year of litigating, still does not need to pay the Plaintiff anything.  And the client can still redirect website traffic for about eight months.  Another client is being sued in Federal District Court for trademark and copyright infringement.  His settlement also looks good:Paying the Plaintiff in the case no money!Changing any copy in the product that may be infringement (with no admittance to the copy being infringement)30 days to establish a new domain and to rebrandTwo intellectual property infringement lawsuits.  Two defendants who can walk away with business changes, but no damages.  That's victory.

When I first settled a trademark infringement suit for about $20,000, I thought I did a great job. The client did have to change the trademark and did have to send the excess product to a company to destroy the products, but I still thought it was a great settlement when in defense. Recently, however, there are a pair of settlement agreements for separate lawsuits that we have attained here at Verna Law. For one client, being sued in Federal District Court for trademark and trade dress infringement, his settlement is sterling: Paying the Plaintiff in the case no money!120 days to finish selling current inventory.60 days to establish a new domain.240 days for the old domain to redirect to the new domain. So, here is a client who, after a year of litigating, still does not need to pay the Plaintiff anything. And the client can still redirect website traffic for about eight months. Another client is being sued in Federal District Court for trademark and copyright infringement. His settlement also looks good: Paying the Plaintiff in the case no money!Changing any copy in the product that may be infringement (with no admittance to the copy being infringement)30 days to establish a new domain and to rebrand Two intellectual property infringement lawsuits. Two defendants who can walk away with business changes, but no damages. That's victory.

Verna Law Video Blog #9:  Victory.  Verna Law has achieved a few excellent settlements for defendants of trademark and copyright infringement lawsuits this month.