City of Carlsbad v. Shah, 2009 US Dist. 96890 (SD Cal 2009)
Plaintiffs announced the name “The Crossings at Carlsbad” for a new community golf course in October 2006. On November 21, 2006, Defendant registered a number of domain names featuring variations on “the Crossings at Carlsbad.” Beginning on November 30, 2006 he filed for several intent to use trademark applications in the name for golf related items and a golf course itself. Plaintiff’s filed for trademarks in the name and associated logo beginning on July 16, 2007. Plaintiffs filed a partial motion for summary judgment for a declaratory judgment regarding trademark rights. The court granted the motion for summary judgment and authorized the USPTO to register Plaintiffs’ pending applications and deny registration of Defendant’s applications.
An intent to use application requires a good faith intent to actually use the mark. Because it is an objective test, it requires actual documentary evidence of intent contemperaneous with filing the application or a reasonable explanation as to why the evidence doesn’t exist. While motion for summary judgment is typically unsuited to determining the factual question of intent, it was appropriate in this case because the defendant did not provide any documentary evidence after ample opportunity to present it, and did not have any explanation as to why no documentary evidence existed.