The District of Oregon took time out during the busy holidays to clarify what it means to have a bona fide intent to use.
That’s the statutory language an applicant swears to when filing a Section 1(b) application for federal registration — better known as an intent-to-use-based (ITU) application. It’s the alternative to a Section 1(a) use-based application and is a way to “reserve” a trademark registration for a mark that hasn’t yet been put to use.
But the applicant does need to have that bona fide intent to put the mark to future use.
In Bobosky v. Adidas AG, the District of Oregon found the applicant — an attorney — lacked that intent when he filed ITU applications to register WE NOT ME in connection with a wide variety of clothing products. Applicant W. Brand Bobosky’s applications matured to registrations when his attorney filed statements of use swearing that the marks had been put to actual use in commerce in connection with each item of apparel listed in the application.
When Mr. Bobosky contacted Adidas in connection with its use of the phrase in a basketball marketing campaign, Adidas pushed back, finding in its investigation that Mr. Bobosky had made no such use except on baseball caps. In response, Mr. Bobosky deleted all apparel items from his registration except for baseball caps. However, he filed a second ITU application that included shirts and footwear, which likewise was registered when he filed a statement of use.
Mr. Bobosky then sued Adidas for trademark infringement arising out of its use of the WE NOT ME phrase in a basketball marketing campaign.
Adidas moved for summary judgment on the ground Mr. Bobosky’s registrations were void ab initio (from inception) because he lacked a bona fide intent to use WE NOT ME on all the goods listed in his initial ITU applications.
The court noted that “[a]n applicant’s subjective testimony about his state of mind cannot demonstrate that he possessed a bona fide intent to use the mark. Typically, an applicant demonstrates his bona fide intent to use by producing ‘a written plan of action’ for a new product or service. If there is an absence of documentary evidence showing the applicant’s intent to use the mark, the burden shifts to the applicant to adequately explain that lack of documentary evidence. By itself, the absence of contemporaneous documents indicating an intent to use is sufficient to prove an applicant’s lack of bona fide intent.”
The court found Mr. Bobosky failed to meet these standards. With respect to his first registration, Mr. Bobosky admitted in depositions that he did not create the list of goods that appeared in his application, which the court found amounted to an admission that he lacked the bona fide intent to use the mark on each of the items, including hats.
Similar evidence led to a similar conclusion with respect to Mr. Bobosky’s second registration. Mr. Bobosky testified that in the same month he filed the application, he had “[n]o plans” to create WE NOT ME clothing or footwear because he had “[n]o need to,” since he had not yet acquired a trademark. Yet, he also testified that before filing that application, he had called two companies about producing WE NOT ME clothing and footwear, but did not receive written price quotes or proposals from them. The court found this testimony was contradictory and concluded that Mr. Bobosky did not have a bona fide intent to use his mark on shirts and footwear.
As a result, the court found his registrations were void and, therefore, could not support Mr. Bobosky’s infringement claim.
The case cite is Bobosky v. Adidas AG, No. 10-630-PK, 2011 WL 6888688 (D. Or. Dec. 29, 2011).
Michael Atkins