Foreign Registration - Registration in the Applicant's Country (Section 44(e))



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  • An applicant who has applied for registration under Section 44(e) of the Lanham Act, claiming priority based on a registration of his mark in a foreign country, must, in his U.S. application, verify, in writing, that he has a bona fide intent to use the mark in U.S. commerce.
    • Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009)
      • An applicant who has applied for registration under Section 44(e) of the Lanham Act, claiming priority based on a registration of his mark in a foreign country, must, in his U.S. application, verify, in writing, that he has a bona fide intent to use the mark in U.S. commerce. 15 U.S.C. § 1126(e).
  • No bona fide intent to use the mark was found because there was no relevant business established.
    • Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009)
      • "FOOTNOTE 5 ""As stated by the Board in Lane, "With respect to the activities of applicant's predecessor, the evidence shows that applicant's principal had succeeded in marketing tobacco in the United States by locating a non-U.S. licensee which exported tobacco to the United States under the previous SMUGGLER mark. This evidence is relevant because it establishes that applicant's principal was engaged in the tobacco marketing business, including the export of tobacco to the United States under the previous SMUGGLER mark. When viewed in the context of this prior experience and success in the relevant industry, we find that applicant's efforts to obtain a licensee for the new SMUGGLER mark are consistent with and corroborative of applicant's claimed bona fide intention to use the new mark in commerce." (Id. at 1356). The situation in Lane is to be contrasted with the present case where there is no evidence that applicant is engaged in the manufacture or sale of automobiles under the claimed mark, thereby providing no evidence of a bona fide intention to use the mark in commerce. See also L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008) and Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008) (no bona fide intent found because there was no relevant business established)."
  • In determining the sufficiency of documentary evidence demonstrating bona fide intent, the TTAB has held that the Trademark Act does not expressly impose any specific requirement as to the contemporaneousness of an applicant's documentary evidence. Rather, the focus is on the entirety of the circumstances, as revealed by the evidence of record.
    • Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009)
      • In determining the sufficiency of documentary evidence demonstrating bona fide intent, the Board has held that the Trademark Act does not expressly impose "any specific requirement as to the contemporaneousness of an applicant's documentary evidence corroborating its claim of bona fide intention. Rather, the focus is on the entirety of the circumstances, as revealed by the evidence of record." Lane Ltd. v. Jackson International Trading Co., supra at 1356.5
  • In determining whether an applicant under § 44(e) has the requisite bona fide intent to use the mark in U.S. commerce, the Board uses the same objective, good-faith analysis that it uses in determining whether an applicant under § 1(b) has the required bona fide intent to use the mark in U.S. commerce.
    • Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009)
      • In determining whether an applicant under § 44(e) has the requisite bona fide intent to use the mark in U.S. commerce, the Board uses the same objective, good-faith analysis that it uses in determining whether an applicant under § 1(b) has the required bona fide intent to use the mark in U.S. commerce. See Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994).
Honda Motor Co., Ltd. v. Friedrich Winkelmann, Opposition No. 91170552 (TTAB 2009) Grand Total
Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351 (TTAB 1994) 1
Grand Total 1
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