©2017. Published in Landslide, Vol. 9, No. 6, July/August 2017, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
An applicant can file for a trademark on the basis of actual existing use or on a bona fide intention to use a mark in the future. The latter would require an intent-to-use (ITU) application. Because proof of use of a trademark in commerce is a requirement for formal registration, an ITU applicant would later have to file a statement of use (SOU) form (accompanied by proof of use of the mark in commerce) to convert an ITU application to actual use.
Why Congress Included the Bona Fide Intention to Use Provision
In 1988, Congress amended the Lanham Act with the passage of the Trademark Law Revision Act (TLRA), which went into effect November 16, 1989. One significant change the TLRA brought to the trademark practice was allowing applicants to file a trademark application on the basis of a bona fide intention to use, which also eliminated applicants’ ability to rely on “token use” of a mark.1 The TLRA provides that “[a] person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce2 may request registration of its trademark.”3 This did not eliminate the requirement to use the mark in commerce before attaining a trademark registration.4 Rather, this change allows applicants to now secure a filing date and establish priority before using the mark in commerce.
This new language in the Lanham Act leveled the playing field between U.S. and international applicants.5 Prior to this change, U.S. citizens had to prove actual use of an applied-for mark, but international applicants, under section 44e (Paris Convention), could establish priority in the United States simply based on their existing foreign registrations (obtained without showing use).6 After this change, applicants relying on an international registration filing under section 44e7 and section 66a (Madrid Protocol)8 also have to submit verification of a bona fide intention to use the mark in commerce when registering that mark with the United States Patent and Trademark Office (USPTO).
What Makes an Intent-to-Use Application Different
An applicant filing an ITU application is able to secure a priority filing date (i.e., constructive first-use date) while the product or service to be offered under that mark is still in the development phase.9 Before the TLRA, a trademark applicant had to attest to and sign a declaration that the applied-for mark was actively in use in commerce when seeking registration.10 However, under the current language, some misguided applicants believe filing an ITU application reserves a right in a mark. This is a misinterpretation of the law because “an applicant’s intent must reflect an intention to use the mark consistent with the Lanham Act’s definition of ‘use in commerce’: ‘[T]he bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.’”11
Difficulties with an Intent-to-Use Application
The ambiguous language in 15 U.S.C. § 1051(b)(1) has yielded a substantial gray area in the law regarding what qualifies as a “bona fide intention to use” and exactly how much evidence is sufficient to prove this intent. Additionally, it is unclear what criteria would amount to “circumstances” that demonstrate “good faith.”12 In Lane Ltd. v. Jackson International Trading Co., the Trademark Trial and Appeal Board (TTAB) noted that “Congress, in drafting the TLRA, purposely omitted a statutory definition of the term ‘bona fide’ as used in the phrase ‘bona fide intention,’ in the interest of preserving ‘the flexibility which is vital to the proper operation of the trademark registration system.’”13 However, the legislative history gives a hint of what is expected: “‘[B]ona fide’ should be read to mean a fair, objective determination of the applicant’s intent based on all the circumstances.”14 Further, the term “bona fide” “can be read broadly or narrowly, subjectively or objectively, by a court or the Patent and Trademark Office.”15 J. Thomas McCarthy also weighed in on this matter, noting that “the evidence is ‘objective’ in the sense that it is evidence in the form of real life facts and by the actions of the applicant.”16
Additionally, timing is paramount because the bona fide intention to use must exist when the application is filed.17 Yet, as long as the applicant’s bona fide intention to use is objectively present at the filing, the documentary evidence for this intent does not necessarily have to be contemporaneous with the actual filing date.18 Hence, the intention to use a mark—although formed by the time of the filing—may be conditionally based on the outcome of a future event related to business development.19 Ultimately, the totality of the circumstances will determine if an applicant had the necessary bona fide intention to use at the time of filing.20 Therefore, the question becomes: what is necessary to make an applicant’s subjective intent pass objective scrutiny?
An applicant’s lack of an objective bona fide intention to use can be the chink in the armor of a trademark application (and ultimately trademark registration if use is later established).21 During an opposition to registration, if the TTAB finds an applicant lacked the requisite bona fide intention to use at the time of filing, the application thereby becomes void ab initio.22 Should this happen, the TTAB may decline to entertain any other claims such as priority or likelihood of confusion.23 An attorney exercising proper due diligence when counseling a client on filing an ITU application should thus ensure that the client understands the need to establish objective evidence of his or her intention to use the mark at the time of filing, especially because some clients are under the erroneous impression that having an attorney sign off on his or her application is enough to demonstrate intent.24
How to Properly Establish a Bona Fide Intention to Use
An analogy of what it takes to lay a solid foundation for an application based on a bona fide intention to use can be explained through the children’s tale of The Three Little Pigs. In that story, each little pig built a house out of different construction materials. One little pig elected to make his home out of straw. Another one opted to construct his house out of wooden sticks. The final little pig built his home out of bricks. When a wolf came along, it huffed and puffed and tried to blow each of the houses down. At the end of the story, only the brick house was left standing. An ITU application requires the proper foundation to be similar to the brick house—i.e., a foundation that is timely, solid, and consisting of objective evidence that can withstand opposition.
The Straw Houses
In the fairy tale, the house built of straw lacked a strong foundation and was constructed out of flimsy material. Due to this flaw in engineering, the wolf destroyed the structure easily. The straw house is like an application based on weak, subjective evidence of an applicant’s bona fide intention to use a mark. Such an application will be successfully knocked down by any “wolf” who dares to oppose it.
The TTAB has provided some guidance in determining what evidence is insufficient as a basis for a bona fide intention to use. Notably, “the absence of any documentary evidence on the part of an applicant” establishes by a preponderance of the evidence that there is a lack of a bona fide intention.25 Even though the TTAB finds “[a]s a general rule, the factual question of intent is particularly unsuited to disposition on summary judgment,”26 the entry of summary judgment is proper in the absence of any documentary evidence of intent present at the time of filing.27 Therefore, an applicant’s documentary evidence should be presentable in a written or concrete, definitive format when filing the application.28 Any evidence an applicant provides must be more than the basic steps taken to prepare and file the trademark application; rather, it must reflect an intention to use the mark in commerce.29 Although a trademark search report can be used to establish a bona fide intention to use under the totality of the circumstances, it is not determinative on its own.30 Further, the applicant’s intended use must be more than “merely to reserve a right in a mark.”31 An example of the latter is an applicant filing an application on the basis of “idealistic hopes for forming a . . . company.”32
In order to show a bona fide intention to use at the time of the filing, there must be enough objective evidence to convey a legitimate business plan.33 A company’s business plan cannot consist solely of securing a mark to attract investors.34 Further, an applicant, at the time of filing, should be able to show plans for the production of any goods identified in the application.35 As an example, the TTAB found a lack of a legitimate business plan where the “[a]pplicant has neither given thought to where its goods under the [subject] mark would be manufactured, nor identified or contracted with third parties who might manufacture such goods, nor identified materials needed therefor, nor prepared any schematics therefor, nor prepared instructional manuals.”36 The inability to produce the goods identified in the application would also weigh against a finding of a bona fide intention to use.37 Further, if an applicant lacks “industry-relevant experience or any expertise in manufacturing,” that also weighs against showing that a proper business plan was developed.38
The mere existence of patents for products or processes at the time of filing a trademark application is not sufficient on its own to establish a bona fide intention to use the trademark for these products or processes.39 Although the existence of a patent can be considered within the totality of the circumstances, such evidence will only be useful if the applicant can demonstrate with other evidence an intention to use the applied-for mark to identify the patented products or processes.40 This requirement also extends to international applicants.41
The act of applying for an excessive number of trademark applications, or filing in numerous unrelated classes, could be indicative of an applicant who lacks a bona fide intention to use and/or is acting in bad faith. A lack of a bona fide intention to use can be shown “where the applicant filed an excessive number of intent-to-use applications to register marks which ultimately were not actually used; and where the applicant filed an excessive number of intent-to-use applications in relation to the number of products the applicant is likely to introduce under the applied-for marks during the pendency of the applications.”42 The TTAB looks for a “demonstrated pattern” of filing numerous applications as an indicator of bad faith.43
The Wooden Houses
Continuing the analogy, the house made of wood did not fare much better against the wolf than the straw house, although the structure had more engineering and slightly better construction materials. For this category of cases, the applicants have better evidence to establish a claim of a bona fide intention to use, although better is not always good enough. The TTAB is unclear regarding when these activities relied on by the applicant could support the validity of the application.
In the following scenarios, some business planning existed. Yet the amount of planning an applicant needs to show is not always clear: “[V]ague references to research and development of products . . . and the creation of a business plan” contained within the minutes of an applicant’s annual meeting did not suffice.44 However, in another decision, a single, pre-filing e-mail regarding the general goal of expanding the use of the trademark to other goods along with some initial talks with potential licensees over brand expansion to the specific goods in the application was enough to shoulder the burden of establishing the applicant’s bona fide intention to use.45 Markedly, in this example, the applicant’s post-filing documentation was used in conjunction with the pre-filing documentation to establish pre-filing intent.46 In another case, an applicant provided services under a different mark than the applied-for mark.47 The applicant had applied for “Preservation Cloud” but offered services under a different—yet similar—mark (“Cloud Preservation”).48 However, the applicant was able to provide “brochures and webpages from [its] website, both from before and after the filing date, promoting the PRESERVATION CLOUD mark for the service provided by applicant.”49 Thus, the TTAB found a bona fide intention to use existed for the mark in question.50 Yet in a seemingly contradictory case decided two years prior, an applicant’s complete lack of business planning did not result in a finding that an application was invalid ab initio.51 In Cloverhill Pastry-Vend, LLC v. 10 Star Enterprises, Inc., the applicant had been using the mark in sales prior to filing. Although the application, as filed, covered the product “organic pastries,” the applicant had sold “non-organic cookies” in two states for the past decade under the applied-for mark.52 The TTAB found there was a bona fide intention to use the mark despite the lack of documentation, because there was evidence that the “applicant was searching for proper organic ingredients to use in its organic cookies.”53
An applicant’s excessive filing of applications could weaken an application by giving the impression that the applications were filed in bad faith. If bad faith is not involved though, then a cure is available. The TTAB has stated that “[i]ntent to use applications are often abandoned, for a variety of legitimate reasons.”54 Nonetheless, an applicant’s “bona fide intention must be present for all the goods or services recited in the application.”55 In a defining case, the TTAB in Wet Seal, Inc. v. FD Management, Inc. found that “an application will not be deemed void for lack of a bona fide intent to use absent proof of fraud, or proof of a lack of a bona fide intention to use the mark on all of the goods identified in the application, not just some of them.”56 Therefore, if an applicant can produce evidence of a bona fide intention to use at least some goods claimed in a class, the application may not be entirely voided.57 The applicant may amend or divide out the goods in the application in a divisional procedure.58 An applicant seeking to register a mark based on a foreign registration is also afforded this same opportunity to cure.59
The Brick Houses
The wolf in the fairy tale could not knock down the final house that was built on a good foundation and solidly constructed with brick and mortar. To continue the analogy, the applicant with the brick house application has thoughtfully constructed an objective evidence trail to show the existence of a bona fide intention to use a mark at the time of filing.
One reason why some of these “straw” or “wooden” house issues arise is due to an applicant’s lack of sophistication. Therefore, an attorney must not blindly sign off on an ITU application for a client without ensuring some proper thresholds have been met.60 At the time of filing, an applicant should have a “definite” plan explaining the purpose of the mark and “documented to the degree appropriate to the product or service in question.”61 The applicant should maintain a record of the names of the people involved in developing and marketing the products or services to be offered under the trademark. These people will later be able to support, by testimony in opposition or cancellation proceedings, the presence of a bona fide intention to use the mark.
By guiding a client on how to properly construct a strong evidentiary foundation (see “‘Bona Fide Intention to Use’ Roadmap”), an attorney can be the masonry tool in the building of a “brick house” ITU application.
“Bona Fide Intention to Use” Roadmap
Information helpful to establish an evidentiary basis for an intent-to-use application:
1. Applicant’s name (name of applicant or of company and company’s agent).
2. Today’s date.
3. Who prepared the form for the trademark registration (applicant, counsel, other)?
4. Have any business plans been discussed for the trademark (informal or formal)? If yes, provide:
• Date discussions held;
• Company members involved in the discussions;
• Location where these discussions were held; and
• Format of business plans (written or unwritten).
5. Has any market research for the product or service to be offered for sale under the trademark been conducted? If yes:
• Describe the steps taken; and
• List the people in the company responsible for the marketing decisions regarding the products/services for which the trademark/service mark will be used.
6. What steps were taken to ensure trademark availability? Was a trademark availability search undertaken? If yes, provide:
• Date conducted;
• Conducted by whom (applicant or counsel name); and
• Method of trademark search (informal Internet search, common-law trademark search, or via a formal trademark search company).
7. Have any efforts been made to create a graphic representation of the trademark? If yes, provide:
• Graphic designer’s name; and
• Date graphic artist was consulted.
8. Have any labels been made for a product or service bearing the mark? If yes, attach samples.
9. Has the mark been used in test marketing? If yes, provide:
• Date(s); and
• Details of the marketing test
10. Have any attempts been made to locate potential licensees? If yes, were these attempts for domestic or international (or both) licensees? Provide:
• Dates of attempts to secure licensees;
• Names of potential licensees approached; and
• Method for contacting potential licensees (phone, e-mail, in-person meetings, other).
11. Were any steps taken to secure permits necessary for conducting business with the trademark (regulatory, etc.)?
12. Do you have any correspondence referring to efforts to launch products or services bearing the trademark?
13. Were any measures taken to secure an online presence (domain name registration, website construction)? If yes, provide:
• Date(s) of efforts; and
• Details of the registration/construction process.
14. Have any steps been taken to procure physical space for the trademark products/services and business? If yes, provide:
• Address or location;
• Date the location was secured (if property was not ultimately secured, please give dates of when discussions were held and with whom these discussions were conducted); and
• Under whose name (person or company) the space is titled or leased.
15. Have any steps been taken to prepare for the manufacturing of the product? If yes, provide:
• Names of people contacted (company name if using an outside company, people with whom you conversed); and
• What planning has been done (budget, materials purchased).
1. H.R. Rep. No. 100-1028, at 7–8 (1988). But see Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 992–93 (Fed. Cir. 2016) (holding that a single sale of two hats is sufficient for a showing of “use in commerce” for trademark registration despite the argument that the sale is de minimis; this minimal use may be viewed by some as allowing a registration for a “token use”).
2. The Commerce Clause in the U.S. Constitution (Article I, Section 8, Clause 3) gives Congress the power to “regulate commerce with foreign nations, and among the several states, and with the Indian tribes.”
3. 15 U.S.C. § 1051(b)(1).
4. Id. § 1051(a)(3)(C).
5. S. Rep. No. 100-515, at 5–6 (1988).
6. H.R. Rep. No. 100-1028, at 3 (“[The] pre-application use requirement . . . unfairly discriminates against U.S. citizens, as compared to foreign citizens.”).
7. 15 U.S.C. § 1126(d)(2) (providing that an application filed under an international convention will be accorded the same priority as if the application had been filed in the United States if, among other requirements, it includes “a statement that the applicant has a bona fide intention to use the mark in commerce”).
8. Id. § 1141f(a) (“A request for extension of protection of an international registration to the United States that the International Bureau transmits to the United States Patent and Trademark Office shall be deemed to be properly filed in the United States if such request, when received by the International Bureau, has attached to it a declaration of bona fide intention to use the mark in commerce that is verified by the applicant for, or holder of, the international registration.”); see also Lane Ltd. v. Jackson Int’l Trading Co., 33 U.S.P.Q.2d (BNA) 1351, 1355 (T.T.A.B. 1994) (“Section 44’s reference to ‘bona fide intention to use the mark in commerce’ is paralleled in Section 1(b) of the Act, 12 U.S.C. Section 1051(b), which requires an ‘intent-to-use’ applicant, whether foreign or domestic, to have ‘a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce . . . .’”).
9. S. Rep. No. 100-515, at 24.
10. Id. at 5.
11. M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1376 (Fed. Cir. 2015) (quoting 15 U.S.C. § 1127).
12. 15 U.S.C. § 1051(b)(1).
13. Lane Ltd., 33 U.S.P.Q.2d at 1355.
14. S. Rep. No. 100-515, at 23.
15. Id. at 24.
16. 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 19:14 (4th ed. 2015).
17. Swatch AG v. M.Z. Berger & Co., 108 U.S.P.Q.2d (BNA) 1463, 1476 (T.T.A.B. 2013) (precedential) (“Because we must consider applicant’s intent at the time the application was filed, these subsequent efforts do not establish intent.”).
18. Lane Ltd., 33 U.S.P.Q.2d at 1357 (“Neither the statute nor the Board’s decision in [Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d (BNA) 1503 (T.T.A.B. 1993)] expressly imposes any specific requirement as to the contemporaneous 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.”).
19. S. Rep. No. 100-515, at 24 (stating that an applicant’s intention “may be contingent on the outcome of an event (that is, market research or product testing)”).
20. Lane Ltd., 33 U.S.P.Q.2d at 1356 (explaining that a bona fide intention to use “is to be a fair, objective determination based on all the circumstances”).
21. M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1375 (Fed. Cir. 2015) (noting that an opposer is “entitled to rely on any statutory ground which negates appellant’s right to the subject registration” (quoting Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1031 (C.C.P.A. 1982))).
22. Spirits Int’l, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 U.S.P.Q.2d (BNA) 1545, 1546 n.3 (T.T.A.B. 2011).
23. SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 U.S.P.Q.2d (BNA) 1300, 1305 (T.T.A.B. 2010) (precedential).
24. Trs. of the Bonnie Cashin Found. v. Lake, No. 91213081, slip. op. at 3, 9 (T.T.A.B. Oct. 12, 2016) (nonprecedential) (granting the opposer’s motion for summary judgment based on the applicant’s lack of a bona fide intent to use, and stating, “In particular, when asked during her discovery deposition what documents she has to support her intent to use the BONNIE CASHIN mark in connection with the identified goods at the time she filed her trademark application, Applicant only pointed to the declaration her counsel signed when filing the subject application”).
25. Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d (BNA) 1503, 1507 (T.T.A.B. 1993); see also Saul Zaentz Co. v. Bumb, 95 U.S.P.Q.2d (BNA) 1723, 1729 (T.T.A.B. 2010) (precedential).
26. Copelands’ Enters., Inc. v. CNV, Inc., 945 F.2d 1563, 1567 (Fed. Cir. 1991).
27. Honda Motor Co. v. Winkelmann, 90 U.S.P.Q.2d (BNA) 1660, 1664 (T.T.A.B. 2009).
28. Heineken Asia Pac. Pte. Ltd. v. Claypool, No. 91220927, slip op. at 7 (T.T.A.B. Sept. 26, 2016) (nonprecedential) (granting the opposer’s motion for summary judgment, due to a lack of bona fide intent to use, and stating, “Applicant, on the other hand, acknowledges that he has no formal written business plan, but asserts that he has ‘a simple mental memorized plan that is in fact a basic business plan’” (citation omitted)).
29. Swatch AG v. M.Z. Berger & Co., 108 U.S.P.Q.2d (BNA) 1463, 1472 (T.T.A.B. 2013) (“The few documents of record appear to relate only to the trademark application.”).
30. Id. at 1474.
31. Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d (BNA) 1503, 1506 n.7 (T.T.A.B. 1993) (finding intention to use means use “in the ordinary course of trade, . . . and not merely to reserve a right in a mark”); see also Swatch, 108 U.S.P.Q.2d at 1477.
32. Lincoln Nat’l Corp. v. Anderson, 110 U.S.P.Q.2d (BNA) 1271, 1277–78 (T.T.A.B. 2014) (precedential) (finding statements in the application such as “the opportunity to create something in the future” and to “cover the trademark in lieu of something growing” insufficient to establish a bona fide intention to use); see also Commodore Elecs., 26 U.S.P.Q.2d at 1506 n.7.
33. PRL USA Holdings, Inc. v. Young, No. 912-6846, 2013 WL 5820849, at *5–6 (T.T.A.B. Oct. 16, 2013) (nonprecedential) (acknowledging that the applicant admitted he did not have “any business planning yet” and finding that he had “no documentary evidence of business plans, marketing or promotional activities, nor any discussions with manufacturers or licensees”).
34. Diageo N. Am., Inc. v. Captain Russell Corp., No. 92103745, 2013 WL 5407296, at *4–5 (T.T.A.B. June 12, 2013) (nonprecedential).
35. SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 U.S.P.Q.2d (BNA) 1300, 1304 (T.T.A.B. 2010).
36. Id. at 1301.
37. Swatch AG v. M.Z. Berger & Co., 108 U.S.P.Q.2d (BNA) 1463, 1477 (T.T.A.B. 2013) (“The Board has repeatedly found a lack of a bona fide intent to use a mark by individuals who lack the demonstrated capacity to produce the goods identified in the application.”); see also L’Oréal S.A. v. Marcon, 102 U.S.P.Q.2d (BNA) 1434, 1444–45 (T.T.A.B. 2012) (precedential); Saul Zaentz Co. v. Bumb, 95 U.S.P.Q.2d (BNA) 1723 (T.T.A.B. 2010).
38. L’Oréal, 102 U.S.P.Q.2d at 1444.
39. SmithKline, 97 U.S.P.Q.2d at 1304.
40. Id. (finding patents “indicate only that the named inventors sought to protect the device described therein, not that applicant possesses a bona fide intent to use the [subject] mark on the goods identified in the involved trademark application”).
41. Nintendo of Am., Inc. v. Golad, No. 91178130, 2011 WL 2360099, at *10 (T.T.A.B. May 31, 2011) (nonprecedential) (concluding that although the applicant produced evidence of a European patent and several foreign trademarks, he did not establish a “nexus as to how these would be used to launch FLASH BOY for the presently applied-for goods”).
42. L’Oréal, 102 U.S.P.Q.2d at 1444–45 (explaining that the “applicant has a history and pattern of filing intent-to-use applications for a disparate range of products for which he has no industry-relevant experience”).
44. SmithKline, 97 U.S.P.Q.2d at 1304.
45. Hard Candy Cases, LLC v. Hard Candy, LLC, No. 91195328, slip op. at 11–12 (T.T.A.B. Nov. 13, 2014) (nonprecedential).
46. Id. at 17–18; see also Lane Ltd. v. Jackson Int’l Trading Co., 33 U.S.P.Q.2d (BNA) 1351, 1357 (T.T.A.B. 1994).
47. CaseCentral, Inc. v. NextPoint, Inc., No. 91198858, 2013 WL 6255043, at *8 (T.T.A.B. Oct. 29, 2013) (nonprecedential).
51. Cloverhill Pastry-Vend, LLC v. 10 Star Enters., Inc., No. 91181131, 2011 WL 6955880 (T.T.A.B. Dec. 16, 2011) (nonprecedential).
52. Id. at *6–8.
53. Id. at *8.
54. Hard Candy Cases, LLC v. Hard Candy, LLC, No. 91195328, slip op. at 20 (T.T.A.B. Nov. 13, 2014).
55. Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d (BNA) 1503, 1506 n.7 (T.T.A.B. 1993).
56. 82 U.S.P.Q.2d (BNA) 1629, 1630 (T.T.A.B. 2007); see also Syndicat Des Proprietaires Viticulteurs De Chateaneuf-Du-Pape v. Pasquier DesVignes, 107 U.S.P.Q.2d (BNA) 1930 (T.T.A.B. 2013) (precedential).
57. Kelly Servs., Inc. v. Creative Harbor, LLC, 846 F.3d 857 (6th Cir. 2017) (holding that the applications would not be voided in their entirety and remanding to the district court to only excise the goods and services where there was no bona fide intention to use); Spirits Int’l, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 U.S.P.Q.2d (BNA) 1545, 1546 n.3 (T.T.A.B. 2011).
59. Sandro Andy S.A. v. Light, Inc., No. 12 Civ. 2392, 2012 WL 6709268, at *5 (S.D.N.Y. Dec. 27, 2012) (directing Sandro Andy “to amend its International Registration and to cull from the list the unused goods and classes” or “file a motion to amend its certificate of extension”).
60. Trs. of the Bonnie Cashin Found. v. Lake, No. 91213081, slip op. at 3 (T.T.A.B. Oct. 12, 2016).
61. McCarthy, supra note 16, § 19:14 (suggesting “a written plan of action for a new product or service, or a new line of goods, or for the re-branding of an existing line of goods or services”).