I Have Been Telling You Non-US People That This Could Happen (Overly Broad Madrid Extension Subjected To Fraud Attack)

Practitioners in registered-rights jurisdictions, also known as pretty much every trademark lawyer in the world other than the US ones and a few other use-based fans, are encouraged to ‘over-file’ – to identify way more goods/services and way more classes than the applicant actually uses in relation to the mark. That might be the right course in most countries, but it is not such a great idea in the US for two reasons: (1) our ‘related goods doctrine’ (that is to say, a trademark can be used to assert rights against use of a confusingly similar mark on related, not just identical, goods/services) makes over-broad coverage somewhat superfluous; and (2) we require a bona fide intent to use on all the goods/services in an application. This is so even for applications under Section 44e (Paris Convention) and Section 66 (Madrid), which applications do not require proof of use.

So when I am instructed to handle Sec. 44 or 66 US applications by non-US folk who present us with encyclopedic lists, covering everything from atom smashers to zookeeper uniforms, I recommend a trim of, at least, the impossible stuff. In my view, if someone came at my client with a 44 or a 66 registration, and the ID contains stuff I just know is not in use, and was never in use because the registrant simply isn’t in that line of work, then I would start thinking counterclaim.

Which is what happened here (see decision below). Plaintiff, which only sells apparel, claimed 250 goods in several classes in its US reg. Defendant sought to cancel the reg on grounds of fraud, namely absence of a bona fide ITU by plaintiff. Plaintiff moved to dismiss the counterclaim, which motion was denied (see decision below).

Now, defendant will have an uphill battle as the Court notes that ‘. . .a lack of bona fide intent for some but not all goods is not necessarily a reason to deem the entire registration void ab initio.’ (citing the Wet Seal case). Given that plaintiff has begun use on some items in the US, it does seem to have had a bona fide ITU on some goods. Nevertheless, plaintiff was back-footed by the counterclaim (and has agreed to trim certain classes from its US reg.

Practice pointer: US related-goods doctrine provides an ample scope of protection beyond the ID in a registration. There is no discernible benefit listing goods/services that the applicant will never provide, and creates the risk of, at a minimum, costly motion practice of the type exemplified here.

sandro andy v light