Email This Post Email This Post | Print This Post Print This Post |

Perils of Relying on Foreign Registrations

© 2012 Charles E. Bruzga

Before a U.S. trademark registration may issue, a trademark applicant must normally use the trademark in U.S. commerce (i.e., commerce between States or with a foreign country). This requirement can be bypassed by relying on a foreign registration from most other countries, and also asserting an intention to use the mark in U.S. commerce, pursuant to § 44(e) of the Lanham Act, or § 66(a) of the Lanham Act if based on the Madrid Protocol. (The Lanham Act is codified as 15 USC §§ 1051 et seq., but all section references below refer to the Lanham Act.)  But, the following discusses three perils of such reliance on foreign registrations.


1. Demonstrable bona fide intent to use the mark. As is the more common case when filing a § 1(b) intent-to-use application, under either § 44(e) or § 66(a) an applicant must verify in writing that it has a “bona fide intention” to use a trademark in U.S. commerce. An applicant does not possess a “bona fide” intent to use a mark based merely on a desire to reserve the right to register a mark. The applicant must possess a demonstrable intent to use the mark in U.S. commerce. For example, in response to discovery requests in Honda Motor Co., Ltd v. Friedrich Winkelmann (Opposition No. 91170552) (TTAB April 2009) concerning a registration under § 44(e), the losing trademark applicant, on the one hand, asserted that “he had a bona fide intent to use the mark * * * on the day the application was filed,” but, on the other hand, was unable to identify any evidence supporting such asserted bona fide intent, and, moreover, admitted that it “has not had activities in the U.S. and has not made or employed a business plan, strategy, arrangements or methods there” and “has not identified channels of trade that will be used in the United States.” Reliance on a foreign registration will not excuse the need to have a demonstrable basis for a bona fide intent to use a mark in U.S. commerce on the day when the trademark application is filed.


2. Defects in foreign registration can doom U.S. application.  The U.S. registration is doomed if ownership of the foreign registration is deficient for any of a number of reasons, such as the U.S. applicant not being identical to the foreign registration owner on the date the U.S registration is to issue, or for deficiency in a foreign registration. In In re Fisons Limited, 197 USPQ 888 (TTAB 1978), the Trademark Trial and Appeal Board stated, “if at any time prior to the issuance of the certificate of registration by the Patent and Trademark Office the foreign applicant divests itself or is divested of the registration of the mark in the applicant’s country of origin, the foundation for registration under Section 44 of the Act falls and registration, if § 44 is the only basis therefor, must be refused.”  Further, in defending against an opposition to register BITZ KIDS for children’s clothing, in The Ritz Hotel v. FO USA (Opp. No. 91,188,728) ( 2009), the applicant raised the deficiency of THE RITZ KIDS mark being based on a French registration that had lapsed before the issuance of the § 44(e)-based U.S. registration of the same mark. In response, the Registrant of THE RITZ KIDS mark immediately surrendered its registration under § 7 and withdrew its opposition with prejudice.  Doom for a U.S. application based on the Madrid Protocol under § 66(a) may, however, be avoided when cancellation or invalidity of the underlying foreign (“basic”) registration invalidates the international Madrid registration within the first five years of the international registration.  Thus, under § 70(c), within three months of cancellation of the international registration, the owner may transform the § 66(a)-based U.S. application into a § 1 or § 44 application, which will have the filing date of the international application and retain any previously enjoyed priority.  In any event, a U.S. applicant should take extra precautions to assure that a valid foreign registration can be properly relied upon.


3. Use in U.S. commerce should commence promptly.  Even if the foregoing concerns (1) – (2) are overcome, the registrant of a trademark must still demonstrate use of the mark under § 8, or § 71(a) if based on the Madrid Protocol, between the fifth and sixth years after registration to maintain the registration.  Alternatively, the registrant will need to show that any nonuse of the mark is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark.  In this connection, non-use of the mark for three consecutive years constitutes prima facie abandonment of the mark (§ 45), and showing special circumstances to justify non-use of a mark requires substantial (i.e., non-trivial) evidence.  For instance, in In Rivard v. Linville, 133 F.3d 1446, the court stated that in order to prove excusable nonuse, “the registrant must produce evidence showing that, under his particular circumstances, his activities are those that a reasonable businessman, who had a bona fide intent to use the mark in United States commerce, would have undertaken.”  The Court upheld the TTAB’s finding that evidence of “sporadic trips to the U.S., cursory investigations of potential sites for salons” that were to use defendant’s registered trademark, and “half-hearted attempts to initiate the business relationships necessary to open a salon” were insufficient to support an intent to commence use of the mark nor were they sufficient to show that the nonuse of the mark during the period was reasonable.  Linville at 1449.  Thus, despite bypassing the need to use a trademark in U.S. commerce to obtain a registration, a trademark owner should still rather promptly use the mark in U.S. commerce after registration.


An applicant for U.S. trademark registration who wishes to rely on a foreign registration to temporarily bypass the need to use the mark in U.S. commerce before registration in the U.S. (1) should do so only after careful consideration of the validity of the foreign registration, (2) should be able to show a demonstrable intent to use a trademark on the day an application is filed, and (3) should nevertheless rather promptly proceed to use the mark in U.S. commerce after registration.