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Recently, Verna Law, P.C. filed an answer and a counterclaim in an opposition proceeding, asking the Trademark Trial and Appeal Board to cancel a trademark that was originally filed in a foreign country.  Why?  Because there is not evidence of the foreign trademark being used in the United States, despite the foreign trademark having registered in the US Patent and Trademark Office.

So, how does a foreign trademark owner bring its foreign trademark to the US Patent and Trademark Office?

Take a step back to look at US trademark law in general.  There is a requirement – usually – that a mark be in use before it can be protected. The US recognizes common law rights in unregistered marks if they have been adopted in good faith and are in actual use on a product or to provide a service to the public.

Under federal law, a mark owned by a US-based applicant must be in use on all of the goods and must be shown in conjunction with all of the services as described in an application.  Proof of use must be filed and accepted by the US Patent and Trademark Office before a registration will issue.

Now, this changes for foreign applicants.

Trademark application

Foreign applicants are permitted to register a trademark in the US without ever having used the mark in the US if it seeks registration under Section 44(e) of the Trademark Act based upon a qualified foreign national or European Community registration or if it seeks registration under Section 66(a) based upon an international trademark registration under the Madrid Protocol.

In all applications filed in the US, it is necessary for the applicant to assert, under penalty of criminal perjury, that it is either using the mark or has a bona fide intent to use the mark in the US on all of the goods and to provide all of the services in the application. If the applicant does not have the requisite intent at the time the application is filed, the application and any resulting registration are vulnerable to being canceled or declared void at a later date. Please note that the filing to cancel a registration for lack of use in the United States is what sparked this post.

An intent-to-use application must be filed by the party entitled to use the mark in commerce on the application filing date, and the application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce.  More marks are being challenged in opposition and cancellation proceedings in the Trademark Trial and Appeal Board on grounds of insufficient intent to use a mark. Thus, although applicants bringing their trademarks through the US Patent and Trademark Office under Section 44(e) or 66(a) need not prove use in order to obtain a US registration, they still do need to have the requisite intent to use the mark in the US at the time their US applications are filed.

Although non-US applicants can register a mark without proving use, they cannot maintain the registration without engaging in use. This is why Verna Law, P.C. made the filing referenced earlier – based on a lack of use in commerce.

Between the fifth and sixth year after a registration issues, all registrants must file an Affidavit of Continued Use (which trademark practitioners call a Section 8 filing) with specimens of use for each class in the registration.  The registrant must also delete from the registration any individual goods and services that are not currently being offered under the mark in the US. This exercise must be repeated ten years after the registration has issued and every ten years thereafter.

Non-US registrants must also be concerned with potential third-party challenges to registered trademarks that are not in use. This is because use of a trademark is not in the trademark application file – one of the weaknesses of a Section 44(e) or 66(a) filing.  And in an opposition or cancellation proceeding, it will be a difficult fight between the litigants to prove if the foreign trademark is in use in the USA.

Under Section 45 of the US Trademark Act, a mark will be deemed to be “abandoned” when use of the mark has been discontinued with the intent not to resume such use, and intent not to resume may be inferred from the circumstances.  Nonuse of a mark for three consecutive years shall be considered prima facie evidence of abandonment. The level of “use” necessary to satisfy this threshold must be a bona fide use of the mark in the “ordinary course of trade” for the specific industry in question, and cannot be a use, such as a token use, made merely as an attempt to reserve a right in a mark.

So, what is the starting point for calculating the three-year period for determining whether a mark registered in the US based upon a non-US registration can be deemed abandoned? That question was answered some time ago for Section 44(e) registrations when the US Court of Appeals for the Federal Circuit, in Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed, Cir. 1990), held that the period of non-use which constitutes prima facie evidence of abandonment begins the day the registration issues.

That question, however, was only recently answered for relatively new US Section 66(a) registrations. In Dragon Bleu (SARL) v. VENM, LLC, Opp. No. 91212231, 112 U.S.P.Q.2d 1925 (T.T.A.B. 2014), the Trademark Trial and Appeal Board, in a precedential decision, held that the date of registration in the US also begins the initial three-year period during which use of the registered mark must commence in the US in order to avoid a finding of abandonment. Of course, as in any case, nonuse of a mark for less than three years combined with an intent not to resume use is also sufficient to support a finding of abandonment.

Foreign registrants must be diligent and aware of the requirements of American law when filing applications in the US. Although “use” of a mark may not be required in order to obtain a registration, a bona fide intent to use a mark on all the goods and services in the application must be present the day the application is filed. For US applications based upon broadly worded foreign registrations, this is an issue which must be taken into consideration when filing such an application. Since claims and defenses based upon these issues are being raised more aggressively in opposition proceedings, cancellation proceedings and infringement lawsuits, it is necessary to exercise great care throughout the filing,  prosecution, and post-registration processes in order to avoid a possible loss of rights.