Trademark Applications Based on Intent-to-Use a Proposed Mark—Be Prepared to Document Your Bona Fide Intent to Use the Mark
Any business adopting a new trademark for goods or services sold in interstate commerce in the United States is well advised to seek federal registration of the new mark with the United States Patent and Trademark Office. The registration process typically takes ten to fifteen months, assuming no unusual problems, and involves examination of the application by an examining attorney and publication to allow for opposition by any adversely affected member of the public. Registration offers legal benefits including charging others with constructive knowledge of your adoption and use of the mark, the presumptive nationwide exclusive right to use your mark for the registered goods or services and related goods or services, and better ability to deter and prevent infringement of your mark than that available for unregistered trademarks. Registration also demonstrates to others that you run your business and protect your intellectual property properly and enhances the salability of your business at exit strategy time.
When to apply for registration
To make sure you are able to secure exclusive rights in your chosen trademark, it is best to apply for registration as soon as possible. United States trademark law has long required an applicant to demonstrate actual use of the trademark in interstate or foreign commerce before the trademark registration can be issued. However, this does not mean that actual use must commence before an application for registration can be filed and the application process commenced. Since 1988, the United States Trademark Act, known as the “Lanham Act,” has allowed trademark applications to be filed at the time the applicant has developed a “bona fide intent to use” the trademark in interstate commerce. The Trademark Act provides that “[a] person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark.” This leads many to believe that the trademark application can be filed as soon as the idea for the trademark pops into the entrepreneur’s head. However, although applying as soon as possible is a good idea, merely having the idea of adopting a new trademark does not qualify as having a “bona fide intent to use” that mark in interstate commerce and a trademark application made at that stage is left vulnerable to a later claim by a third party that the application is void ab initio for failure to have a bona fide intent to use the mark at the time the application was filed.
Showing a bona fide intent to use the mark
For this reason, it is important to be sure you are in a position to show a bona fide intent to use the new mark at the time the application is filed should that become necessary at a later point. The application examination process does not delve into the bona fides of the applicant’s intent to use the trademark. The examiner relies solely on the applicant’s declaration under penalty of perjury that the applicant has a bona fide intent to use the mark in commerce. The issue can arise later, however, after the trademark is published for public opposition. Another trademark owner who feels threatened by your application can oppose registration of your mark on the ground that you lacked a bona fide intent to use the mark at the time you filed the application.
If such an opposition should be lodged, how do you demonstrate that you did, in fact, have a bona fide intent to use the mark in commerce at the time the application was filed? According to the Trademark Act, “use in commerce” means “the bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in the mark.” Based on this definition, the Trademark Trial and Appeal Board, the administrative tribunal within the Patent and Trademark Office that considers challenges to a trademark application by third parties, has held that an applicant must be able to show some objective evidence of a concrete intent and ability to use the trademark. The applicant’s mere sworn testimony that he or she had such an intent has been found insufficient, without some supporting independent evidence. The intent must be firm, although it may be contingent on the outcome of an event, for example, market research or product testing.
Evidence of bona fide intent to use
There is no specific requirement stating what evidence is necessary to overcome a claim of lack of a bona fide intent to use. Rather, the inquiry focuses “on the entirety of the circumstances, as revealed by the evidence of record.” However, in general, two types of evidence have been found particularly relevant and helpful in establishing the existence of the requisite intent. The first is documentary evidence showing the intent to actually use the mark in commerce. Such evidence could include memos documenting the intent to use the mark,, business plans created within the organization or submitted to obtain financing, market research or studies relating to the new products, services or trademark, or correspondence or communications with prospective suppliers, dealers or customers concerning the new products, services or trademark.
The second type of evidence found most useful is evidence that the applicant actually had the ability to produce or obtain the proposed goods, or deliver the proposed services, at the time the application was filed. Such evidence could include evidence that the applicant has sold similar or related goods under other marks. It could also include documentary evidence showing that the applicant has relationships with manufacturers or producers of the goods or services or that the applicant itself has the capacity to produce the goods or deliver the services.
The type and amount of evidence that will be sufficient to show bona fide intent to use a trademark for a particular application will vary depending on the surrounding facts and circumstances. However, before your intent-to-use trademark application is submitted you should, in consultation with your trademark attorney, consider whether your plans have progressed far enough to support an application and, if so, whether there is sufficient evidence to document your intent.
In summary, filing a trademark application merely to reserve a right in a mark you might want to use in the future is premature and will leave your application vulnerable to attack on the ground that you lacked a bona fide intent to use the mark in commerce when the application was made. You need to wait until you plans are sufficiently concrete to demonstrate an intention and ability to market the planned goods or services under the proposed trademark. However, your intent may be contingent on the outcome of future events such as financing, market research or product development, without compromising the integrity of your trademark application. Whether the time is ripe for filing an intent-to-use trademark application is a determination you need to make carefully with the help and advice of your trademark attorney.
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