There is some curious eco-mark news to report: apparently, last month General Motors filed two notable U.S. trademark applications, one for BOLT and the other for CHEVROLET BOLT.
The clean tech and electric vehicle blogosphere was buzzing with speculation as to what this new brand means. Is GM planning to offer additional EVs, perhaps a new low-cost Chevy Volt, a short-range performance vehicle, or a cool new concept car? Maybe different battery sizes?
One clue is that the BOLT applications’ goods listing is much broader than the goods in GM’s prior CHEVROLET VOLT trademark registration, which identified “extended range electric automobiles.” So, contrasted with the VOLT, the BOLT trademark could cover any type of automobile, electric or otherwise.
For now, though, the clean tech blogs had to conclude there is no indication that GM intends to use this new trademark. Inside EVs proposed that GM might be trying to protect itself from a Chinese ripoff called Bolt.
Gas 2.0 carried this non-use preemptive motive further, noting that:
Car companies are constantly taking out trademarks for names they have no intention of using; it’s just a matter of making sure nobody else uses it either.
While car companies may try to keep potential brand names away from their competitors, there are strict legal limits on the ability to protect a trademark that is not in use.
To fully understand this and to put the BOLT Applications in context, we need a bit more information about the U.S. trademark system.
A U.S. trademark application must have one or more legal bases, i.e., a situation (basis) defined by the federal trademark law, to support the filing. The available filing bases are (1) actual use of the mark in interstate commerce, (2) a bona fide intent-to-use the mark in interstate commerce, (3) a foreign trademark application for the same mark and the same goods or services, (4) a foreign registration for the same mark and the same goods or services, and/or (5) extension of an international registration for the same mark and the same goods or services. By far the most common filing bases are the first two.
In the United States, trademark rights flow from, and are contingent upon, use of the mark. Although an applicant can keep a U.S. trademark application pending for about two and a half years based only on the stated intent to use the mark, the U.S. Patent and Trademark Office (USPTO) will not register a trademark in a use-based or intent-to-use application absent proof of use in interstate commerce and there is no enforceable trademark right, even at common law, without use of the mark.
More particularly, to obtain a registration of a use-based or an intent-to-use application, the applicant must prove use of the mark for the goods and/or services listed in the application by submitting a specimen showing such use.
If based on a foreign trademark application or registration or an international registration, however, the applicant does not need to use the mark in the United States to obtain a U.S. registration. The USPTO will register the trademark upon proof that the applicant obtained a foreign registration.
Interestingly, the United States is one of only a handful of countries that require use to register a trademark and have an enforceable right in the mark. Most countries do not require use of the mark to obtain a registration.
So filing a U.S. trademark application based on a foreign or international registration gets around the use requirement (in the United States and potentially anywhere in the world), at least or the purpose of obtaining a U.S. trademark registration.
But that’s not the end of the story. The owner of a U.S. trademark registration registered solely on the basis of a foreign or international registration (i.e., without use in the United States) cannot enforce its trademark in a U.S. court. While some U.S. courts have held that such registrants have standing to sue, even in those courts, the registration would be canceled without use in interstate commerce.
So while a foreign trademark registration can get you a U.S. registration without use in the United States, you probably can’t stop other U.S. users of the mark because your registration would be unenforceable and would not stand up in court.
Now back to GM’s BOLT applications. This is where it gets interesting. The applications are not based on use of the marks in the United States or an intent to use in the United States. Rather, each application is based on a foreign application filing, specifically Brazilian trademark application number 907703178 for CHEVROLET BOLT and 907703070 for BOLT.
Brazil is one of those countries that does not require use to obtain a trademark registration. So GM could get itself U.S. trademark registrations, albeit unenforceable ones, for BOLT and CHEVROLET BOLT without ever using this exciting new brand anywhere in the world.
Even though GM’s U.S. registrations may be unenforceable “paper” registrations, Gas 2.0’s point still has some merit. Ownership of U.S. trademark registrations for the BOLT marks could still scare off potential users and keep competitors at bay for a while.
Don’t be surprised, though, to not see a shiny new Chevy Bolt speeding by you on the highway.