UNDERSTANDING INTENT TO USE TRADEMARK APPLICATIONS
In order for a name, logo, or slogan to transcend its status of merely being an idea and obtain the legal protections of a lawfully recognized trademark, the mark must be used in conjunction with the sale of goods/services. However, trademark Applicants that have not yet used their prospective mark in commerce can still obtain preliminary protections of the mark by registering an “Intent-to-Use” trademark application with the United States Patent and Trademark Office (USPTO). Here, the Applicant is declaring that while he/she is not presently using the mark in commerce, he intends to use the mark in commerce at a later date. Upon sufficient use of the mark in commerce, which is a function of the number of sales made, the Applicant must submit a Trademark Statement of Use, along with a “Specimen” of proof, to the USPTO illustrating said use.
BONA FIDE INTENT TO USE A TRADEMARK IN COMMERCE
Five statutory bases are available to an Applicant when filing a trademark application with the United States Patent and Trademark Office. Establishing Bona Fide Intent to Use the trademark commercially and to link the trademark with particular goods and services is one statutory basis that may be satisfied for a trademark application to be submitted.
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), provides that an Applicant may file a trademark or service mark application based on a Bona Fide Intention to Use a mark in commerce “under circumstances showing the good faith of such person.”
Documentary evidence is critically important to demonstrate that an Applicant legally possesses the Bona Fide Intent to apply the trademark to goods and services in commerce.
WHAT DOCUMENTARY EVIDENCE SUPPORTS A BONA FIDE INTENT TO USE A TRADEMARK?
Maintaining proper records is not only an important business practice but a tremendously useful device to be called upon when an Applicant needs to demonstrate all efforts made to use a trademark in connection with the goods or services in commerce. The documentation of trademark use should reference the trademark specifically and not only refer to the use or launch of the products in commerce.
Documentary evidence to establish Bona Fide Intent can include:
- Emails or other written correspondence concerning the use of the trademark in branding specific goods or services.
- The development of marketing materials for product promotion.
- The product’s packaging, including artwork.
- Emails or other written correspondence to corroborate the development and manufacturing of the products to be trademarked.
- Emails or other written correspondence with proposed distributors, retailers, exporters, licensees or agents for the proposed trademark.
- Business plans, and subsequent revisions for the products to be trademarked.
- Proof of research on the goods or services to be trademarked.
- Purchase orders for any product, or components to create the product to be trademarked.
- Any permits, licenses or other regulatory certificate required by a government authority.
WHEN SHOULD I REVIEW MY BONA FIDE INTENT TO USE TRADEMARK APPLICAITON WITH A TRADEMARK ATTORNEY?
Recent decisions issued by the Trademark Trial and Appeal Board (TTAB) have allowed for greater insight into how the Government views Bona Fide Intent to Use Applications and have enabled lawyers practicing in the area of intellectual property law and trademarks to better counsel clients before the intent-to-use trademark application is filed. Here, the trademark attorney may discuss proactive measures Applicant’s may take to document proof of Bona Fide Intent.
WHEN DOES THE USPTO RECOGNIZE THE EXISTENCE OF “BONA FIDENT INTENT TO USE” IN TRADEMARK APPLICATIONS?
The United States Patent and Trademark Office can deny an entire application if it determines the Bona Fide Intent-to-Use standards are lacking in the application. How does the USPTO ultimately determine if the Applicant had a “Bona Fide Intent to Use”? The Federal Circuit Court has held that the United States Patent and Trademark Office renders its determination of Bona Fide Intent to Use based on the totality of all circumstances. Each one of nine points of evidence referenced above may be weighed and considered by the USPTO. The details really do matter.
WHAT HAPPENS IF MY TRADEMARK APPLICATION IS OPPOSED ON THE BASIS OF “LACK OF BONA FIDE INTENT TO USE”?
Remember, just because a trademark application has been accepted by the USPTO does not mean that the Applicant is totally in the clear. An entity or individual who believes that he will be harmed by the publication of a trademark may oppose the trademark’s publication while the trademark is in its 30-day limbo period of publication in the Official Gazette. If the Trademark has already passed the Official Gazette bar, an Opposer may still claim his/her right to cancel the trademark.
Oppositions and Cancellations to trademark applications may exist for multiple reasons but for the purposes of this article, one such reason worth considering is “Lack of Bona Fide Intent to Use”. Here, the opposer is claiming that the Applicant never actually had the requisite Intent to use the trademark in commerce when the Trademark Application was filed and therefore, the Trademark should be considered null and void.
WHICH PARTY IS RESPONSIBLE FOR PROVING A LACK OF BONA FIDE INTENT TO USE?
Preliminarily, the burden of demonstrating an absence of Bona Fide Intent will be borne by the opposer, upon whom it is incumbent to demonstrate, by a preponderance of the evidence, that the Applicant lacked a Bona Fide Intent to Use the trademark in connection with the goods/services referenced in the application. Understandably (and fortunately for the Applicant), this can be a rather challenging burden to meet.
If the Opposser manages to marshal evidence purporting to illustrate a Lack of Bona Fide Intent, the trademark Applicant may produce documentary evidence countering the Opposer’s evidence and demonstrate that he did in fact have Bona Fide Intent to Use. Ideally documentary evidence will predate the date the application was signed and forwarded to the United States Patent and Trademark Office – but it is not imperative to prove Bona Fide Intent. Any inconsistency in the evidence reduces the strength of a defense against a Bona Fide Intention challenge.
Anticipating challenges to the Bona Fide Intent basis before filing for trademark protection is important. Proper planning can mitigate any weakness in the claim to Bona Fide Intent, and a consultation with an attorney in the area of intellectual property trademark law before the application improves the chances of a successful application.