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In Hard Candy Cases, LLC v Hard Candy, LLC, Opposition No. 91195328 (November 13, 2014) [not precedential], Opposer claimed that the opposed application for the mark HARD CANDY was void on filing because (among other things) licensor Applicant lacked a bona fide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.