INTRODUCTION

In business, trademarks are everything. It's how consumers come to know, love and trust your brand. It's a valuable corporate asset, and many disputes can arise of name rights with the explosion of e-commerce and the millions of new companies being formed around the world, and the United States each and every year. In short, it is a jungle out there. When you find yourself in a trademark dispute, having experienced legal counsel on your side is paramount. This blog contains the official grounds to seek to cancel a competitors trademark in a TTAB trademark cancellation proceeding.

POSSIBLE GROUNDS TO CANCEL OR INVALIDATE AN EXISTING REGISTERED TRADEMARK

Examples of available grounds for opposition and for cancellation are listed below from the TTAB manual of procedure

Please Note: The grounds identified in examples (2) (as to de jure functional marks), (3), (12) through (14), (17), and (21) are available for cancellation of a Principal Register registration over five years old. This list is exemplary, not exhaustive.

(1) Trademark Act § 2(d), 15 U.S.C. § 1052(d): That defendant's mark so resembles a mark registered in the Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the defendant, to cause confusion, or to cause mistake, or to deceive. [ Note 6.]

(2) Trademark Act § 2(e), 15 U.S.C. § 1052(e): For example, that defendant's mark, when used on or in connection with the goods or services of the defendant, is merely descriptive or deceptively misdescriptive of them, [ Note 7.], or that defendant's mark is primarily geographically descriptive [ Note 8.], or primarily geographically deceptively misdescriptive of them [ Note 9.]; or that defendant's mark is primarily merely a surname [ Note 10.]; or that defendant's mark comprises any matter that, as a whole, is functional. [ Note 11.]

(3) Trademark Act § 2(a),15 U.S.C. § 1052(a): For example, that defendant's mark is geographically deceptive, [ Note 12.], that defendant's mark falsely suggests a connection with plaintiff's name or identity [ Note 13.], or that defendant's mark is a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and was first used on or in connection with wines or spirits by the applicant on or after January 1, 1996. [ Note 14.]

(4) That there was no bona fide use of defendant's mark in commerce prior to the filing of the use-based application for its registration under Trademark Act § 1(a), 15 U.S.C. § 1051(a), or for a Trademark Act § 1(b), 15 U.S.C. § 1051(b) application, within the expiration of the time for filing a statement of use. [ Note 15.]

(5) That defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b), 15 U.S.C. § 1051(b). [ Note 16.] A plaintiff need not allege and prove that the defendant acted in bad faith and intended to deceive the USPTO. The requirements for pleading and proving a lack of a bona fide intent to use a mark do not equate to the requirements for pleading and proving fraud. [ Note 17.]

(6) That defendant's mark is a mere background design that does not function as a mark separate and apart from the words displayed thereon. [ Note 18.]

(7) That defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark. [ Note 19.]

(8) That defendant's mark, consisting of a particular color combination applied to its goods, is ornamental and has not become distinctive as an indication of the source of defendant's goods. [ Note 20.]

(9) That defendant's mark, consisting of a particular sound applied to its goods, is not inherently distinctive and has not acquired distinctiveness. [ Note 21.]

(10) That defendant's mark, consisting of trade dress, product design or packaging, is not inherently distinctive and has not acquired distinctiveness. [ Note 22.]

(11) That the term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark (i.e. "failure to function" as a mark). [ Note 23.]

(12) That defendant's mark represents multiple marks in a single application (or registration) ("phantom mark"). [ Note 24.]

(13) That defendant's mark has been abandoned due to nonuse with intent not to resume use, and nonuse for three consecutive years shall be prima facie evidence of abandonment, [ Note 25.]; or due to a course of conduct that has caused the mark to lose significance as an indication of source. [ Note 26.]

(14) That defendant's mark consists of or comprises the name of a particular living individual without the individual's consent. Trademark Act § 2(c), 15 U.S.C. § 1052(c). [ Note 27.]

(15) That defendant's product design is generic. [ Note 28.]

(16) That defendant's mark would dilute the distinctive quality of plaintiff's famous mark. [ Note 29.]

(17) That defendant has used its mark so as to misrepresent the source of its goods or services. [ Note 30.]

(18) That defendant has misused the federal registration symbol with intent to deceive the purchasing public or others in the trade into believing that the mark is registered. [ Note 31.]

(19) That defendant committed fraud in the procurement of its registration or during the prosecution of its application for registration. [ Note 32.]

(20) That defendant's registered mark interferes with the registration of a foreign owner's mark under Article 8 of the General Inter-American Convention for Trademark and Commercial Protection of Washington, 1929 ("Pan American Convention"), 46 Stat. 2907. [ Note 33.]

(21) That defendant's application is barred from registration by claim or issue preclusion. [ Note 34.] See also TBMP § 311.02(b).

(22) That defendant's mark is the title of a single creative work and not considered a trademark. [ Note 35.]

(23) Trademark Act § 2(b), 15 U.S.C. § 1052(b): Registration of a mark which is "the flag or coat of arms or other insignia of the United States, or of any State or municipality" is prohibited. [ Note 36.]

(24) That defendant has not established a commercial presence in the country from which its underlying foreign registration issued where such foreign registration forms the basis of the U.S. registration or application for registration. Trademark Act § 44(e); 15 U.S.C. § 1126(e). [ Note 37.]

(25) That defendant's intent-to-use application was assigned or transferred in contravention of Trademark Act § 10; 15 U.S.C. § 1060. [ Note 38.]

(26) That defendant's mark is generic. [ Note 39.] A mark registered on the Supplemental Register is subject to cancellation on the basis that it is generic. [ Note 40.]

(27) That defendant's mark is not in lawful use in commerce where the provision of the identified goods and/or services is unlawful under federal law. [ Note 41.]

(28) That defendant in a cancellation proceeding has never used the mark in commerce on or in connection with some or all of the goods or services recited in the registration. [ Note 42.]

A CLOSER LOOK AT A POPULAR GROUND TO SEEK TO CANCEL A MARK - TRADEMARK ABANDONMENT

From #13 above:

"(13) That defendant's mark has been abandoned due to nonuse with intent not to resume use, and nonuse for three consecutive years shall be prima facie evidence of abandonment, [ Note 25.]; or due to a course of conduct that has caused the mark to lose significance as an indication of source. [ Note 26.]"

NOTE 25:

First see Trademark Act §45, 15 U.S.C. § 1127 which notes the definition of abandonment:

Abandonment of mark. A mark shall be deemed to be "abandoned" if either of the following occurs:

• (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

• (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

Attorney Steve® Tip: A mark can become generic if a company fails to "police" its mark (i.e. by sending cease and desist notices to infringers). For pleading purposes a party must allege (and be prepared to prove) "abandonment of the mark as to particular goods through nonuse with no intent to resume use."

Cases that discuss abandonment

In the United States, abandonment can be established upon a showing of three or more years of nonuse coupled with evidence of an intent not to resume use. See 15 U.S.C. § 1127. Three consecutive years of nonuse can be treated as prima facie evidence of abandonment. Id. Nonuse for abandonment purposes has been defined as “no bona fide use of the mark made in the ordinary course of trade.” See Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015 (TTAB 2018).

See, e.g., Linville v. Rivard, 41 USPQ2d 1731 (TTAB 1996), aff'd, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998); Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Vans, Inc. v. Branded, LLC, 2022 USPQ2d 742 (TTAB 2022) (despite claiming attempts to sell or license the mark, defendant discontinued use of the mark with an intent not to resume use); Peterson v. Awshucks SC, LLC, 2020 USPQ2d 11526, at *16-17 (TTAB 2020) (plaintiff failed to prove abandonment of defendant's mark because defendant was able to demonstrate that it maintained an intent to resume use of its mark throughout the period of nonuse); Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015, 1020 (TTAB 2018) (discussing pleading requirements for a legally sufficient claim of abandonment); City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 USPQ2d 1676-79 (TTAB 2013) (abandonment of a registration under Trademark Act § 44(e), 15 U.S.C. § 1126(e), based on over three years of nonuse where respondent did not use mark with recited services since at least the issuance date of the involved registration and where the nature of the use shown by respondent did not constitute use in commerce); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 (TTAB 2012) (more than three years of nonuse, commencing with filing date for majority of the identified goods, and no evidence rebutting prima facie showing); Auburn Farms, Inc. v. McKee Foods Corp., 51 USPQ2d 1439 (TTAB 1998). Cf. Wirecard AG v. Striatum Ventures B.V., 2020 USPQ2d 10086, at *9 (TTAB 2020) (prima facie showing of abandonment rebutted by fact showing registrant's intent to commence use); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179 (TTAB 2008) (plaintiff could not prove priority because it abandoned mark with no intent to resume use prior to use by defendant); Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (plaintiff must allege ultimate facts pertaining to the alleged abandonment). See also Saddlesprings Inc. v Mad Croc Brands Inc., 104 USPQ2d 1948, 1550-52 (TTAB 2012) (claim of abandonment is available with respect to a claim against a §66(a) registration, which is a registered extension of protection under 15 U.S.C. § 1141f(a))

Section 66(a) note from case: under Section 66(a) of the Trademark Act, based on International Registration No. 0872639, registered on September 23, 2005. The registration was originally issued to an entity identified as Voima Ltd., a Liechtenstein corporation, and was subsequently assigned to respondent on May 18, 2007 and recorded with the Office's Assignment Branch on June 22, 2007. See Reel/Frame 3568/0001. A Section 71 Declaration of Use filed by respondent was accepted on February 15, 2013.

NOTE 26:

Trademark Act § 45, 15 U.S.C. § 1127. See, e.g., Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1422 (TTAB 2016) (abandonment found where parent company's use of the mark cannot inure to the benefit of the subsidiary that owned the mark); Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1133-34 (Fed. Cir. 2015) (no abandonment found where it was found that consumers would not view stylistic modifications as a different mark, resulting in the same continuing commercial impression), cert. denied, No. 15-660 (Jan. 25, 2016); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, (TTAB 2009) (failure to police third party use of marks); Tea Board of India v. The Republic of Tea, Inc., 80 USPQ2d 1881 (TTAB 2006); Woodstock's Enterprises Inc. v. Woodstock's Enterprises Inc., 43 USPQ2d 1440 (TTAB 1997), aff'd mem., 152 F.3d 942 (Fed. Cir. Mar. 5, 1998).

LITIGATION TIP: BE PREPARED FOR THE RESPONDENT TO CLAIM "I HAD INTENT TO RESUME" BUT MAKE SURE THERE IS CORROBORATING PROOF!

A good case to read on point is the Awshucks case: this case involved allegations that Awshucks had abandoned its trademark with no intent to resume. The parties each conducted discovery and had their evidence to rely on:

Petitioner's Evidence: Notice of reliance on Respondent's responses to interrogatories and requests for admission, news articles, Internet third-party website excerpts and searches;4 testimony declarations of Jill Peterson (“Petitioner Decl.”) and Nicholas Peterson (“Peterson Decl.”); 5 crossexamination testimony of John Keener (“Keener cross”);6 and the rebuttal testimony declarations of Michael Bowers (“Bowers R-Decl.”), John Cone (“Cone R-Decl.”) and Staci Bednarski (“Bednarski R-Decl.”).

Respondent's Evidence: Notice of reliance on printouts from the USPTO's assignment database including the cover sheet and assignment of Trademark Registration No. 4524998 to Respondent, 8 and on Petitioner's responses to requests for admission;9 testimony declarations of John Keener (“Keener Decl.”), 10 Elizabeth Allen (“Allen Decl.”),11 Jeffrey Fuquay (“Fuquay Decl.”),12 Tate Arthur (“Arthur Decl.”),13 and Mandy Coleman (“Coleman Decl.”);14 and the oral redirect examination of John Keener (“Keener redirect”).1

The Court analyzed the claims and found there was an INTENT TO RESUME thus, no abandonment sufficient to cancel the trademark. Here are some of the findings/holdings:

• “To overcome that prima facie case [of abandonment, Respondent] must come forth with evidence that it ‘discontinued' use of [the] mark without an ‘intent not to resume' use.” See Imperial Tobacco, 14 USPQ2d at 1393. In assessing evidence of a registrant's intent to resume use in this context, the registrant's “plans must be to resume commercial use of a mark within the ‘reasonably foreseeable future.”' Executive Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1198-99 (TTAB 2017) (quoting Hornby v. TJX Cos., 87 USPQ2d 1411, 1421-22 (TTAB 2008)). Subsequent use may be probative of whether the registrant intended to commence use during a previous period of nonuse. Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 94 USPQ2d 1315, 1317 (Fed. Cir. 2010) (Board may consider evidence and testimony regarding Mattel's practices that occurred before or after the three-year statutory period of nonuse to infer Mattel's intent to resume use during the three-year period). Such evidence should temporally and logically link the later use to the prior nonuse, such that an inference can be drawn regarding the intent to resume use during the period of nonuse; otherwise, mere evidence of subsequent use may not suffice to establish that the registrant intended to resume use. Parfums Nautee Ltd. v. Am. Int'l Indus., 22 USPQ2d 1306, 1310 (TTAB 1992).

• Respondent argues that “Mr. Keener's testimony conclusively demonstrates that [Respondent] never intended to abandon the A.W. Shuck's mark. Mr. Keener's testimony is supported by several non-party witnesses who worked with him in developing the A.W. Shuck's fast casual dining concept.” According to Respondent, the evidence consisting of Mr. Keener's testimony and Respondent's non-party witnesses (Elizabeth Allen, Jeffrey Fuquay, Tait Arthur, and Mandy Coleman) establishes, inter alia, the efforts made by [Respondent] to locate suitable locations for A.W. Shuck's restaurants, design efforts, and other efforts involving continued use of the A.W. Shuck's mark to identify restaurant services, including use of the mark at an A.W. Shucks restaurant located at 208 King Street, Charleston, South Carolina, which opened on or about June 2, 2019….Mr. Keener was continually—beginning as early as 2016—trying to resume use of the A.W. Shuck's mark to identify restaurant services. He took various affirmative steps toward that goal, including spending money to hire third-parties to assist him and actively seeking suitable locations. Unfortunately, numerous factors conspired to delay that process, including difficulties finding an appropriate location and issues with the City of Charleston's Board of Architectural Review, which is very particular about buildings in the Historic District of Charleston. This evidence is more than sufficient to rebut. FOOTNOTE: We note that “intent to abandon” is not the test. Intent not to resume use is the critical element. See, e.g., Imperial Tobacco, 14 USPQ2d at 1394.
• Petitioner continued to argue several points:

-The mark is not mentioned in the correspondence between Mr. Keener and Ms. Allen, and between Mr. Keener and other parties, regarding Ms. Allen's design plans submitted to the City of Charleston for the State Street location in 2017, or on the plans themselves.

-The mark is “referred to as AW SHUCKS no periods and no apostrophe” in the proposed design logos prepared by Mr. Fuquay in 2017. 100 [Contrarily, one of the two proposed designs includes an apostrophe in the form of a shrimp].

-The mark is referred to as “Aw Shucks” in the menu design prepared by Mr. Fuquay in 2017. 101 [It is also referred to as “Aw Shucks Seafood Shack” and “AWSSS” in the menu].

-The mark is not mentioned in the email correspondence between Mr. Keener and Ms. Coleman regarding the negotiations to purchase an existing restaurant in Charleston County in January 2018;

-The restaurant is referred to as “AW Shuck Shack” in a first exchange of emails pertaining to Tait Arthur's 2018 invoice proposal and interior floor plan design for the 66 State Street location, and the design is referred to as “AWS plans” in a second exchange of emails a copy of the draft floor plan design.103 [Contrarily, the invoice from Mr. Arthur refers to “AW Shucks Shack” with an “s” in Shucks].

-The mark is not mentioned in the correspondence and text messages between Mr. Keener and Ms. Allen regarding the architectural designs she drafted for the State Street location, or the plans themselves.

-The subject line of the email from a subcontractor (Millworks) providing an estimate to a contractor (R. W. Newman) identifies “AW SHUCKS.”

VI. Conclusion In conclusion, we find that Respondent has overcome the presumption of abandonment that arose due to Respondent's nonuse of the mark A.W. SHUCK'S for more than three consecutive years. Considered in its totality, the evidence in this case, including Respondent's efforts to find a new location for the restaurant (using a “fast casual restaurant concept”) between 2016 and 2019 following discontinuation of use at the original location; Respondent's plans, designs, and construction at a proposed new location at 66 State Street between 2017 and 2018; preparation of proposed new logo and menu designs between 2017 and 2018, including designs that were eventually used; and the opening of the 208 King Street location on June 3, 2019; demonstrates that Respondent maintained an intent to resume use of the mark. Petitioner has failed to prove abandonment of the mark in Registration No. 4524998. Decision: The petition to cancel is denied as to one registered mark, but not the other.

WHAT ABOUT CANCELLATIONS DUE TO FRAUD ON THE USPTO?

As noted above:

"(19) That defendant committed fraud in the procurement of its registration or during the prosecution of its application for registration. [ Note 32.]"

NOTE 32:

Here are the cases cited in the TTAB practice manual:

See Fed. R. Civ. P. 9(b); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009); Galperti, Inc. v. Galperti S.R.L., 17 F.4th 1144, 2021 USPQ2d 1115, at *5 (Fed. Cir. 2021) (party need not establish secondary meaning of its own uses of mark that is merely a surname, or privity with other users of the mark, for those uses to be counted in determining falsity of claim of substantially exclusive use under § 2(f)); DrDisabilityQuotes.com, LLC v. Krugh, 2021 USPQ2d 262, at *5 (TTAB 2021) (voluntary claim of acquired distinctiveness under § 2(f) is material to examination and can be challenged in a fraud claim); University of Kentucky v. 40-0, LLC, 2021 USPQ2d 253,at *21-22 (TTAB 2021) (misunderstanding requirements for use-based application is not proof of intent to deceive USPTO); Chutter, Inc. v. Great Management Group, LLC, 2021 USPQ2d 1001, at *13 (TTAB 2021) ("reckless disregard" satisfies the requisite intent for fraud claims), appeal docketed, No. 22-1212 (Fed. Cir. Dec. 2, 2021); Freki Corp. v. Pinnacle Entertainment, Inc., 126 USPQ2d 1697, 1703 (TTAB 2018) (fraud claim insufficiently pleaded); Daniel J. Quirk, Inc. v. Village Car Co., 120 USPQ2d 1146 (TTAB 2016) (fraud claim based on statements made in application oath dismissed); Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d 1361 (TTAB 2014) (claim of fraud sustained); Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1928 (TTAB 2014) (failure to state a claim of fraud because statements were not false, not material and no allegation regarding intent, no leave to replead as would be futile); Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1522-24 (TTAB 2013) (motion to dismiss denied where fraud claim sufficiently alleged); Meckatzer Löwenbräu Benedikt Weiß KG v. White Gold LLC, 95 USPQ2d 1185, 1187 (TTAB 2010) (motion to dismiss denied where fraud claim sufficiently pleaded); DaimlerChrysler Corp. v. American Motors Corp., 94 USPQ2d 1086 (TTAB 2010) (summary judgment on fraud claim denied); Enbridge, Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537 (TTAB 2009).

See also Exergen Corp. v. Wal-Mart Stores Inc., 575 F.3d 1312, 91 USPQ2d 1656, 1670 (Fed. Cir. 2009) ("[P]leadings on information and belief require an allegation that the necessary information lies within the defendant's control, and … such allegations must also be accompanied by a statement of the facts upon which the allegations are based") (citing Kowal v. MCI Communications Corp., 16 F.3d 1271, 1279 n.3 (D.C. Cir. 1994)); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 212 USPQ 801, 803 (CCPA 1981) (fraud must be pleaded with particularity); Bart Schwartz International Textiles, Ltd. v. The Federal Trade Commission, 289 F.2d 665, 129 USPQ 258, 260 (CCPA 1961) ("[T]he obligation which the Lanham Act imposes on an applicant is that he will not make knowingly inaccurate or knowingly misleading statements in the verified declaration forming a part of the application for registration."); Smith International, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981) (fraud requires a willful intent to deceive); G&W Laboratories Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1574 (TTAB 2009) (a finding of fraud as to one class in a multiple-class registration does not require cancellation of all classes in a registration); Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1509 (TTAB 2008) (false claim of use of mark); Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006) (same).

Cf. Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478 (TTAB 2009) (improperly pleaded fraud claim cannot be basis for summary judgment); Zanella Ltd. v. Nordstrom Inc., 90 USPQ2d 1758, 1762 (TTAB 2008) (timely proactive corrective action taken with respect to pleaded registrations raises rebuttable presumption that opposer did not intend to commit fraud); University Games Corp. v. 20Q.net Inc., 87 USPQ2d 1465, 1468 (TTAB 2008) (rebuttable presumption that opposer lacked willful intent to deceive Office arises when registrant amended identification of goods during ex parte prosecution); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1916 (TTAB 2007) (fraud not found where statement identifying goods in application, although inartfully worded, was not false).

Please Note: The Federal Circuit's decision in In re Bose, 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009), clarified that fraud in a Board proceeding may not be based merely on a finding that a party "knew or should have known" that it was not using its mark on all of the goods or services recited in an application. Additionally, the Board's decision in Chutter, Inc. v. Great Management Group, LLC, 2021 USPQ2d 1001 (TTAB 2021), appeal docketed, No. 22-1212 (Fed. Cir. Dec. 2, 2021), held that "reckless disregard" satisfies the requisite intent for fraud claims. Accordingly, consideration of the holdings in cases involving fraud in a goods/services use statement pre-Bose and Chuttershould be reviewed under the standard for fraud as set forth in those cases, and not as set forth in the line of Board cases following the "knew or should have known" standard set forth in Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205 (TTAB 2003).

NO BONA FIDE INTENT TO USE MARK

As referenced above:

"(5) That defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b), 15 U.S.C. § 1051(b). [ Note 16.] A plaintiff need not allege and prove that the defendant acted in bad faith and intended to deceive the USPTO. The requirements for pleading and proving a lack of a bona fide intent to use a mark do not equate to the requirements for pleading and proving fraud. [ Note 17.]"

Note 16 and 17:

16. See, e.g., M.Z. Berger & Co. v Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1897 (Fed. Cir. 2015) (lack of bona fide intent is a proper statutory grounds on which to challenge a trademark application), aff'g 108 USPQ2d 1463, 1471-77 (TTAB 2013) (documentary evidence, testimony and other record evidence do not support applicant's claimed bona fide intent to use); Kelly Servs., Inc. v. Creative Harbor, LLC, 846 F.3d 857, 121 USPQ2d 1357, 1369-70 (6th Cir. 2017) (applying Board precedential decisions and affirming district court determination that applicant lacked a bona fide intent to use its mark as to some, but not all the goods listed in its applications, but vacating the judgment to the extent that applicant's applications were voided in their entirety); Monster Energy Co. v. Tom & Martha LLC, 2021 USPQ2d 1197, at *12 (TTAB 2021) (if lack of bona fide intent is found as to some, but not all, goods or services, the former is subject to deletion from the application, but absent proof of fraud, the application or relevant class would not be considered void in its entirety); Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 10020, at *10 (TTAB 2020) (underlying application void ab initio where individual registrant, at the time application was filed, lacked a bona fide intent to use the mark alone); A&H Sportswear Co. v. Yedor, 2019 USPQ2d 111513, at *6 (TTAB 2019) (lack of a bona fide intent to use found where only document not sufficiently contemporaneous with filing of application); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2008-09 (TTAB 2015) (lack of bona fide intent to use found where no documentary evidence predated application filing date); L'Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1443 (TTAB 2012) (lack of a bona fide intent to use found where there was no documentary evidence, affirmative statement that no documents exist, no industry experience, no development or business plan, vague allusions to using the mark through licensing or outsourcing, and applicant's demonstrated pattern of filing intent-to-use applications for disparate goods under the well-known and famous marks of others); Spirits International B.V. v. S. S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1548-49 (TTAB 2011) (lack of a bona fide intent to use found where there was no documentary evidence, an affirmative statement that no such documents exist, and no other evidence to explain lack of documentary evidence); SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1304-05 (TTAB 2010) (lack of a bona fide intent to use; no documentary evidence; record devoid of any other evidence of intended use); Honda Motor Co. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) (lack of bona fide intent to use); Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008) (lack of bona fide intent to use); Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1352 (TTAB 1994); Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1504 (TTAB 1993).

Cf. Rolex Watch U.S.A. Inc. v. AFP Imaging Corp., 101 USPQ2d 1188, 1190 (TTAB 2011) (capacity to market and manufacture the goods, and identified goods consistent with a nature extension of current product line, rebut the lack of documentary evidence), judgment vacated based on action of defendant on appeal, 107 USPQ2d 1626 (TTAB 2013); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1643 (TTAB 2007) (capacity to market and /or manufacture goods, having produced them in the past under different marks, rebuts claim that applicant lacked bona fide intent to use).

17. See SmithKline Beecham Corp. v. Omnisource DDS LLS, 97 USPQ2d 1300, 1305 (TTAB 2010) which noted:

In sum, applicant has no documentation to demonstrate that it had the requisite bona fide intent to use the mark AQUAJETT in commerce when it filed the present application. As evidenced by its responses to discovery requests, applicant has no plans relating to manufacture, licensing, marketing or use of the mark. So as to be clear, the record is devoid of any evidence such as manufacturing efforts, licensing efforts, test marketing, correspondence with prospective licenses, preparation of marketing plans or business plans, creation of labels, marketing or promotional materials, and the like.

The absence of documentation coupled with applicant's failure to take testimony or offer any evidence supporting its bona fide intent to use the AQUAJETT mark in connection with the identified goods convince us that applicant did not possess a bona fide intent to use the mark. Further, applicant's mere statement that it intends to use the mark, and its denial that it lacked a bona fide intent, do not establish, in fact, that it had a bona fide intent to use the mark in commerce when it filed the involved application. Evidence bearing on bona fide intent is “objective” in the sense that it is evidence in the form of real life facts and by the actions of the applicant, not solely by applicant's uncorroborated testimony as to its subjective state of mind. That is to say, Congress did not intend the issue to be resolved simply by an officer of applicant later testifying, “Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some time in the future.” J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §19:14 (4th ed. 2009). Here, the lack of documentation or testimony clearly outweighs any subjective or sworn intent to use the mark. Cf. Imperial Tobacco Ltd. v. Philip Morris Inc., 14 USPQ2d 1390, 1394 (Fed. Cir. 1990) (“Nothing in the statute entitles a registrant who has formerly used a mark to overcome a presumption of abandonment arising from subsequent nonuse by simply averring a subjective affirmative ‘intent not to abandon.'”). As discussed above, applicant's vague and speculative statements in the minutes from its annual meetings fail to make any mention of the AQUAJETT mark or the goods identified thereby. Similarly, the patent registrations and asserted prototype fail to mention the AQUAJETT mark or provide evidence that applicant had a bona fide intent to use such mark on oral irrigators at the time applicant filed the involved trademark application.

Applicant cites to no authority for its apparent position that a plaintiff seeking to prove that an applicant lacked a bona fide intent to use its mark at the time it filed its application must demonstrate that applicant acted in bad faith and intended to deceive the USPTO. To the contrary, the absence of evidence of an applicant's bona fide intent to use a mark does not necessitate a showing that such applicant acted in bad faith. Simply put, the lack of a good faith intent to use a mark does not equate to bad faith.