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

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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.

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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.)

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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.

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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.

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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.

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

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2/23/2017 4 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.

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“Abandonment” After 3 Years

• f 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)

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“Abandonment” After 3 Years

• f 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].

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2/23/2017 5 “Abandonment” Prior to 3 Years

• f 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.”

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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

• r 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).

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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

• bjective. 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).

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2/23/2017 6 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].

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And now, for something completely different…

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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

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2/23/2017 7 Post Registration Proof of Use Report

19 Deletions/Cancellations/Acceptances/Inaccurate Use Claims by Basis for Registration Basis for Registration Percentage of Registrations Selected for the Pilot Deleting Goods/Services Queried Under the Pilot Percentage of Registrations Selected for the Pilot Receiving Notices of Cancellation Percentage of Registrations Selected for the Pilot Receiving Notices of Acceptance (Including for a Narrowed Scope of Goods/Services) Percentage of Registrations Selected for the Pilot Unable to Verify Previously Claimed Use in Section 8 or 71 Declarations Section 1(a) 28% 17% 83% 45% Section 44(e) 58% 7% 93% 65% Section 66(a) 57% 14% 86% 71% Combined Section 1(a) and 44(e) 56% 12.5% 87.5% 69%

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 1st 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

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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

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2/23/2017 8 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

• r 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

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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

• therwise 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.

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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

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Technology Evolution Pilot Program

• Unacceptable Amendments

– “Downloadable software for use as a spreadsheet in the field of accounting” in Class 9 to “Providing

• n-line non-downloadable software for use as a

spreadsheet in the field of business management” in Class 42 – Not acceptable as subject matter changed

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Technology Evolution Pilot Program

• Unacceptable Amendments

– “Video game tape cassettes and video game cartridges” in Class 9 to “Video game discs and video game cartridges” in Class 9. – Not acceptable because although the mark is no longer in use on “video game tape cassettes,” it is still in use on “video game cartridges,” and therefore petitioner would not be able to show that an extraordinary situation exists

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Technology Evolution Pilot Program

• Proposed amendments published at:

https://www.uspto.gov/trademark/trademark

• updates-and-announcements/proposed-

amendments-identifications-goods-and- services

• Comments in opposition may be submitted to:

TMTechEvolutionComments@uspto.gov

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Back to our regularly scheduled programming…

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Differences In Foreign Practices Which May Cause Issues In US

• Use typically not required for registration
• Intent to use may not be required – EU
• Descriptions may be broad and functional

– Acceptable goods in Madrid Goods and Services Manager or EU Harmonized Database often broader than what allowed in US

• https://webaccess.wipo.int/mgs/
• Surnames sometimes registrable without

acquired distinctiveness - EU

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Identification of Goods in §44 Applications – MPEP 1402.01(b)

• May not exceed the scope of goods/services in

foreign registration with a §44 priority claim

• Multiple Bases: Can add goods/services
• utside scope of foreign registration if based
• n use (§1(a)) or intent to use (§1(b))
• Can add classes and still claim priority if

identification of goods/services in foreign registration broad enough to cover goods/services in multiple classes

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2/23/2017 11 Limitations on Applications filed in US pursuant to Madrid Protocol - §66

• No registration on the Supplemental Register

– MPEP 1904.02(f)

• No changes to classification – MPEP

1904.02(b)

– Class numbers cannot change – Goods/services cannot be moved b/n classes – Classes cannot be added

• Mark cannot be modified - MPEP 1904.02(j)

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CASE STUDY – Only the names have been changed to protect the innocent

• Mark: MERKEL (Surname)
• Goods/Services in German application:

– Class 7: Agriculture machinery for soil processing, for sowing, for transporting agricultural goods; – Class 42: scientific and industrial research in the development of agricultural machinery

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Filing or Amending - §44 Appl.

• Description of Goods/Services

– Class 7: Agriculture machinery for soil processing, for sowing, for transporting agricultural goods – Indefinite

• Can amend to add specific goods:
• Machinery for soil processing, namely, tillers, disc

harrows, cultivators

• Machinery for sowing, namely, agricultural seed

planting machines

• Machinery for transporting agricultural goods, namely,

farm wagons (Class 12) – Can add

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2/23/2017 12 Amending – Ext. Request under §66

• Description of Goods/Services

– Class 7: Agriculture machinery for soil processing, for sowing, for transporting agricultural goods – Indefinite Refusal

• Can amend to add specific goods:
• Machinery for soil processing: tillers, disc harrows,

cultivators

• Machinery for sowing: agricultural seed planting

machines

• Machinery for transporting agricultural goods: farm

wagons (Class 12) – Cannot be added

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Filing or Amending - §44 Appl.

• Description of Goods/Services

– Class 42: scientific and industrial research in the development of agricultural machinery

• Confirm whether intend to offer to 3rd parties in US
• If not, delete (Foreign associates usually want you to

sign the declaration)

– Can add additional classes/goods beyond scope of foreign applicaton based on use or ITU – at filing

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Amending – Ext. Request under §66

• Description of Goods/Services

– Class 42: scientific and industrial research in the development of agricultural machinery

• Confirm whether intend to offer to 3rd parties in US
• If not, delete

– Cannot add additional classes/goods beyond scope of original based on use or ITU

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2/23/2017 13 Primarily a Surname/Descriptiveness Refusal

• § 44 Application

– Can Amend to Supplemental Register – regardless

• f whether mark in use yet
• § 66 Application

– Cannot Amend to Supplemental Register – Must show Acquired Distinctiveness

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Presenters

Timothy J. Feathers - Partner Stinson Leonard Street LLP 1201 Walnut Street, Suite 2900 Kansas City, MO 64106-2150 T: 816.691.2754 timothy.feathers@stinson.com Kent R. Erickson Patent Attorney ERICKSONKERNELL IP 8900 State Line Road, Suite 500 Leawood, KS 66206 (P) 913.549.4700 kre@kcpatentlaw.com

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