## Facts

- W. Brand Bobosky and We Not Me, Ltd. claimed rights in the slogan “WE NOT ME,” which Bobosky coined in 2000 and promoted through merchandise and local advertising.
- Bobosky filed an intent-to-use (ITU) application in 2004 for “WE NOT ME” covering apparel, later narrowing it to hats; he filed a second ITU application in 2008 for clothing including hats, shirts, and footwear.
- Bobosky obtained two federal registrations based on the ITU applications and later statements of use; the registrations covered a broad range of apparel goods.
- Adidas used “WE NOT ME” in a 2007 basketball marketing campaign connected to the NBA and Kevin Garnett.
- In late 2007, Bobosky’s counsel contacted Adidas asserting trademark and other rights and disputing Adidas’s use.
- In discovery, Bobosky admitted he was not using the mark on all goods listed in his applications/filings and had no plans to use the mark on some listed items; documentary evidence of concrete plans to use the mark across the full listed goods was limited.
- There was evidence of actual use of “WE NOT ME” on shirts and hats and related promotion that could be viewed as source-identifying.

## Issues

1. Whether Bobosky’s ITU-based federal registrations were void ab initio because he lacked a bona fide intent, at filing, to use “WE NOT ME” in commerce on all goods identified in the applications and related filings.
2. Whether, despite invalid registrations, Bobosky could still claim protectable unregistered trademark rights through actual use (particularly on shirts and hats) sufficient to support an unfair competition theory.
3. Whether the record required invalidation of the registrations for fraud on the USPTO.

## Decision

- The court granted Adidas’s motion for partial summary judgment in part, holding the federal registrations were void ab initio for lack of bona fide intent to use the mark on the full scope of listed goods.
- The court denied the motion in part, holding there was a genuine dispute of material fact as to whether Bobosky acquired unregistered trademark rights through use on shirts and hats; related unfair competition claims could proceed.
- The court did not rely on fraud as the primary basis for disposition, applying the demanding intent-to-deceive standard and treating lack of bona fide intent as the dispositive defect.

## Legal Principles

- An ITU applicant must have a bona fide intention, at the time of filing, to use the mark in commerce on the goods identified in the application.
- Bona fide intent must be supported by objective evidence; uncorroborated or inconsistent testimony, without concrete plans or preparations, may be insufficient.
- If an ITU filing lacks bona fide intent as to the identified goods, the resulting registration may be void ab initio.
- Trademark rights can arise through actual use without registration; defects in registration do not necessarily defeat claims based on use-based (unregistered) rights.
- For slogans on apparel, whether use is ornamental or trademark use can depend on context, including presentation and whether the slogan indicates source (including a “secondary source”) rather than functioning only as decoration.
- Fraud on the USPTO requires a material false statement made with intent to deceive; it is not established by mistake or overbroad claims alone.

## Conclusion

The court invalidated the plaintiff’s ITU-based registrations for “WE NOT ME” as void ab initio due to lack of bona fide intent to use the mark on the full list of claimed goods, but allowed litigation to continue on whether the plaintiff had acquired enforceable unregistered rights through actual, source-identifying use of the slogan on shirts and hats.


Bobosky v. Adidas AG, 843 F. Supp. 2d 1134 (D. Or. 2011)