In a decision that underscores why you should only file in the U.S for goods and services you actually plan to offer, the Trademark Trial and Appeal Board recently re-affirmed that the requirement of a “bona fide” intention to use an applied-for mark on each and every listed good and service in a U.S. trademark application applies equally to foreign applicants pursuing registration under Madrid. In this case, Nestle opposed an application for NESPORT on the grounds of priority and likelihood of confusion, as well as based on a lack of bona fide intent to use the mark on all the goods covered. The application covered pharmaceuticals, teeth filing, dental impression materials, vermin control products, herbicides, and various food and beverage products. Nestle bore the burden of showing a lack of intent, which it did by establishing at trial that Applicant could not provide evidence of his capacity, expertise, or infrastructure to produce and distribute such a wide range of products, and that the business plans created after the application was challenged (two years after the application’s filing date) were insufficient to establish bona fide intent as of the filing date. The Board noted that a vague desire to reserve a name for future use in commerce is not equivalent to a bona fide intent to use the mark in commerce.
This decision illustrates the importance of evaluating and revising U.S. specifications prior to filing to cover only those goods/services that actually reflect the nature of your client’s business offerings. Otherwise you give opponents an easy target to knock out your registration.
Société des Produits Nestlé S.A. v. Cándido Viñuales Taboada, Opposition No. 91232597 (August 5, 2020) [precedential] (Opinion by Judge Jonathan Hudis).
To learn more about the issues raised by this client bulletin, please contact Julia Anne Matheson at jmatheson@potomaclaw.com.
Note: This publication is distributed with the understanding that the author, publisher and distributor of this publication and/or any linked publication are not rendering legal, accounting, or other professional advice or opinions on specific facts or matters and, accordingly, assume no liability whatsoever in connection with its use. Pursuant to applicable rules of professional conduct, portions of this publication may constitute Attorney Advertising.
