RAISING THE BAR BLACKBERRY V. BLACK MAIL
The same result followed a 2009 opposition to an application for the Black Mail trademark for computer software on grounds of likelihood of confusion with the BlackBerry mark—and of the applicant’s lack of bona fide intent to use the mark. The TTAB said, “that applicant’s CEO, believed Black Mail to be a good mark for future use does not establish a bona fide intent to use.” The iWatch application faced another problem—a laundry list of goods, such as watches, clocks, cases, hands, dials for clocks and watches, watch-bands, straps, boxes, clasps, and fobs. That was a tip-off that the company probably didn’t really intend to use the mark on all those goods. The overly broad description of the goods helped open the application to attack. The IP counsel could have advised the company on how to limit its application—to seek protection for the iWatch trademark for products that it was actually contemplating. It may have been unrealistic even to begin rough plans for all the listed goods—whether or not some of the plans may have reached fruition. With the help of IP counsel, the company may have been better able to set business priorities and allocate resources so that the products with the best chance of a launch within a few years would make the list of goods. Instead, when asked during the trademark opposition if there were products other than watches for which the company planned to use the mark iWatch, the owner answered, “No.” Asked specifically whether or not the company expected the iWatch mark to be used for clocks and personal care products, the owner again answered, “No.” In fact, the employee who filed the application testified that the owner had instructed that the application be filed for watches and clocks only. The employee stated that the
application was filed with the lengthy list of related products because it was “standard” and was used “to leave all doors open.” Wrong answer again. A review of the application by IP counsel could have avoided listing goods for which there was clearly no intent to use the applied-for trademark.
YOU CAN’T MAKE STUFF UP
Finally, the Berger Co.’s evidence that it was making plans to use the mark for actual products—emails that forwarded the images of watches and a clock bearing the mark— were created only in response to a request from the trademark office. The images had been created only a few days before they were submitted to the trademark office as evidence of intent. So the images weren’t legally acceptable evidence of Berger’s planning process for trademarking its products.
SEEK COUNSEL
The missteps related to the Berger Co.’s testimony are only symptoms of the underlying problem: lack of legal advice. It’s important to consult IP counsel early in the product development cycle when planning to seek trademark protection. You need to think through the trademark application with legal advice and to formulate a plan, which could be subject to change, and how it will eventually use the trademark on specific products. Then, if you want to register a trademark, you should take the first steps toward executing the plan. Otherwise, you may be deemed to have intended to reserve a trademark, instead of intending to use it. »
Howard N. Aronson has for the past 30 years provided legal counsel to toy industry companies. He is the managing partner of Lackenbach Siegel LLP, an intellectual property law firm recognized for its nine decades of handling toy company.
HOW THE LAW WAS CHANGED Before 1988, trademark law required an applicant to be using the mark in commerce at the time of the application’s filing to qualify for trademark registration. That’s because trademark rights in the U.S. are based on the commerce clause. First use—not filing date—determines who owns the mark. So filing a trademark application alone does not create trademark rights. In fact, you can own a trademark without ever registering it at all, as long as you are using the mark in commerce. (Not a good idea, though. Because it’s usually much more difficult and expensive to enforce an unregistered trademark than a registered trademark.) Under the pre-1988 law, which required evidence of use at the time of the trademark application, application, applicants applicants often often trademark presented token use—a minimal use of presented token use—a minimal use of the trademark for the specific purpose of the trademark for the specific purpose of securing rights before the product or sersecuring rights before the product or service had had entered entered the the market. market. Congress Congress dedevice cided that this system was unfair, because cided that this system was unfair, because for some some industries, industries, such such as as aviation, aviation, token token for use was impossible. In addition, the pracuse was impossible. In addition, the practice of of minimal minimal use use to to secure secure trademark trademark tice rights resulted in the Trademark Office rights resulted in the Trademark Office registering many trademarks that were registering many trademarks that were never used beyond the initial token use. never used beyond the initial token use. In 1988, Congress revised the trademark In 1988, Congress revised the trademark law to to allow allow intent-to-use intent-to-use applications. applications. law Applicants were no longer required to to Applicants were no longer required demonstrate use of the trademark before demonstrate use of the trademark before applying, but but only only had had to to declare declare a a bona bona applying, fide intent to use the trademark. fide intent to use the trademark. As the the 1988 1988 House HouseReport Reportstated, stated,“The As “The use of the term ‘bona fide’ is meant use of the term ‘bona fide’ is meant to to eliminate such ‘token use’ and to eliminate such ‘token use’ and to require, require, on an objective view of based onbased an objective view of the circumthe circumstances, a good faith intenstances, a good faith intention to eventutionuse to eventually theand mark in a real ally the mark inuse a real legitimate and legitimate commercial sense.” commercial sense.” That means that That your means thatintent your company’s intent must company’s must be demonstrable be demonstrable and subjective more thanbelief. a mere and more than a mere subjective belief. Or, as the leading tradeOr, as the leading trademark authority put mark authority put it, “Congress did not it, “Congress did not intend the issue to intend the issue to be resolved simply by be resolved simply by an officer of the apan officer of the applicant later testifying, plicant later testifying, ‘Yes, indeed, at the ‘Yes, indeed, at the time we filed that time we filed that application, I did truly application, I did truly intend to use the intend to use the mark at some time in the mark at some time in the future.’” While future.’” While the trademark examiner will the trademark examiner will not cross-exnot cross-examine your intentions set forth amine your intentions set forth in your in your application, your competitors just application, your competitors just might.
TOYBOOK.COM | DECEMBER/JANUARY 2016 | THE TOY BOOK 45