July 22, 2019

July 22, 2019

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July 19, 2019

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Good(s) Intentions – What's Enough to Establish Bona Fide Intent to Use Trademark?

When used effectively, brand and merchandise licensing can increase the value of a brand by extending it into new, relevant product categories and by further monetizing brand equity. And when seeking to protect a brand in extension categories with a federal, intent-to-use application, it is good practice for a brand owner to document its intention and extension efforts, both before and after filing an application. This is true regardless of a recent TTAB decision in which a licensor Applicant was found to have a bona fide intent to use its mark, despite not having pre-filing documentation that specifically referenced the goods of its brand-extension application. 

In Hard Candy Cases, LLC v Hard Candy, LLC, Opposition No. 91195328 (November 13, 2014) [not precedential], Opposer claimed that the opposed application for the mark HARD CANDY was void on filing because (among other things) licensor Applicant lacked a bona fide intent to use the mark in connection with the applied-for leather goods. The only documentation that Applicant could rely on bearing a date prior to the filing of the application was an email with attached proposal from Applicant's witness to a potential licensing representative, stating that Applicant's goal was to extend "Hard Candy into a lifestyle brand." However, the only goods listed in the proposal were cosmetics. Opposer argued that in the absence of documentary evidence that predated Applicant's filing date and explicitly pertained to leather goods, the application was void because Applicant did not have a bona fide intent to use the mark. The Board disagreed with "Opposer's premise that Applicant's documentary evidence is of no probative value merely because leather goods were not specifically mentioned in the licensing proposal or because most of Applicant's documents postdate the filing of the involved application." Instead, the Board found that Applicant's post-filing documentation (which did refer to leather goods) and witness testimony (explaining the meaning of "lifestyle brand") were consistent, supportive, and corroborative of the existence of Applicant's pre-filing bona fide intent to use the HARD CANDY mark with leather goods.

While Applicant was ultimately successful in proving a bona fide intent in this case, the better practice is to proactively document the intent to use, ideally, with some level of detail. Brand owners should start from day-one by jotting down minutes of a brand-expansion meeting, summarizing potential licensing discussions in an email to yourself or others, documenting and/or saving pre-filing search materials, filing market research materials on the viability of entering a particular product category, etc. These documents are likely already in the brand owner's possession; it's just a matter of saving them to a paper file or document management system. If you have any questions on what constitutes a bona fide intent to use a mark in support of a federal application, please contact us. 

© 2019 Sterne Kessler


About this Author

Tracy-Gene Durkin, Mechanical Patent Trademark Attorney, Sterne Kessler law firm

Ms. Durkin leads the Mechanical Patent and Trademark Group.  With over twenty years of experience obtaining and enforcing intellectual property rights, she melds her expertise with utility and design patents, trademarks, and copyrights to create a unique IP protection strategy to meet her clients' individual needs.  Ms. Durkin’s experience includes helping clear new products and trademarks for use in the marketplace, selecting appropriate IP protection, and enforcing such protection through mediation, litigation and licensing.  She is sought out for her knowledge of...

Ivy Clarice Estoesta, Mechanical Design Attorney, Sterne Kessler Law Firm

Ms. Estoesta is an associate in the Mechanical and Design practice group at Sterne Kessler.  Ms. Estoesta’s practice focuses on trademarks, design patents, and copyrights.  Her legal experience, which began at the firm, and academic background provide her a multidimensional perspective in securing comprehensive IP rights for an array of clients in various industries, including pharmaceuticals, dietary food and beverages, footwear, electronic devices, and household cleaning products.

Ms. Estoesta joined the firm in 2006 as a legal assistant in the Biotechnology/Chemical practice group.  Her combined interest in science and art drew her to the firm’s Mechanical and Design practice, and she formally transitioned to the firm’s Mechanical and Design practice group as a legal assistant in 2007.  At that time, Ms. Estoesta’s practice focused exclusively on trademarks, and she assisted with the prosecution and maintenance of U.S. and foreign trademark rights.  Subsequently, Ms. Estoesta transitioned to a Student Associate in 2008, during which she gained significant experience in clearing, prosecuting and enforcing trademark rights in the U.S. and abroad.  To date, Ms. Estoesta has more than 5 years of experience in drafting opinions on trademark registerability and infringement, cease and desist letters, trademark applications and other communications filed with the U.S. Patent & Trademark Office and various foreign offices.  She also has experience in Oppositions and Cancellations before the U.S. Trademark Trial and Appeal Board. 

Julie D. Shirk, Patent & Trademark Specialist, Sterne Kessler Law Firm
Patent & Trademark Specialist

Julie D. Shirk joined Sterne Kessler in 1989 and continues to specialize in patents and trademarks in the firm's Mechanical Group.

Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy...