Brand owners looking to register their trade marks in the US must show “bona fide intention to use in the US”. A recent US Trademark Office decision shows this is far more than just a box-ticking exercise. Stephen Groom reports on Honda Motor Co. v Winkelman.
Who: Honda Motor Co Ltd v Friedrich Winkelman
When: April 2009
Where: U.S. Trademark Trial and Appeal Board, Alexandra, Virginia
Law stated as at: 1 June 2009
Honda Motor Co, Ltd opposed an application by one Friedrich Winkelman ("FW") to register V.I.C. as a U.S. Federal trade mark in respect of "vehicles for transportation" in Class 12.
One of Honda's grounds of opposition was likelihood of confusion between FW's mark and Honda's existing U.S. registration of the mark CIVIC in respect of "automobiles" in class 12.
Another ground was that FW allegedly lacked the "requisite bona fide intent to use the mark in commerce" at the time of filing the V.I.C. application.
FW countered that on the contrary its clear intention to use was evidenced by its existing registrations of V.I.C as trade mark for "vehicles for transportation" in Germany, in the European Union by way of a Community Trade Mark on the register since 2005 and in various other states by way of a registration since 2004 under the Madrid international trade mark registration system.
CTM etc registrations enough?
But was this enough to show intention to use V.I.C. in commerce in the U.S.? The Appeal Board's answer was in the negative. No U.S. business plan or strategy had been produced, no advertising or other promotional material, just details of the ex US trade mark registrations and assertions of intent.
The Appeal Board held that FW should have been in a position to "rely on specific facts that establish the existence of an ability and willingness to use the mark in the U.S. to identify its claimed "vehicles for transportation" at the time of filing the application."
In the Board's view FW had failed to do this, so Honda's opposition was successful and FW was refused registration.
Why this matters:
This verdict may be appealed, but it sends a clear message to UK and other non US brand owners seeking registrations of their trade marks in the U.S.: to satisfy the "bona fide intention to use in commerce" requirement it will not be enough to rely on UK or other ex US registrations of the mark in question or evidence of marketing activity outside the U.S.
Other clear evidence will likely need to be in existence, prior to filing, such as business plans, U.S.-centric advertising materials and records of discussions with third parties such as distributors or retailers.