There are two primary types of trademark (and service mark) applications that are filed with the United States Patent and Trademark Office (“PTO”). The first type of application is called an “in use” or “Section 1(a)” application. An “in use” application is filed when an applicant is actually using a trademark in commerce in conjunction with the sale of the applied-for goods or services. The second type of application is known as an “intent to use,” “Section 1(b)” or “ITU” application. An “intent to use” application is filed when an applicant is not yet using the given mark in commerce in conjunction with the sale of the applied-for goods or services, but has a “bona fide intent to use the given mark in commerce” in conjunction with the sale of such goods and services.
Some individuals and start-up businesses that are not yet selling or offering their planned goods or services file intent to use applications under the mistaken belief that all they need to file such an application is the required filing fee and a subjective intent to use the given mark in commerce. As discussed below, there is more to filing an intent to use application than simply and subjectively wanting to use a trademark in commerce. Planning and preparation are crucial to this endeavor. If proper planning and preparation are not undertaken prior to filing an intent to use application, a party who opposes the application may successfully have the application refused.
15 U.S.C. § 1051(b)(1) states 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.” Id. In filing an intent-to-use application, an applicant must show a bona fide (subjective) and good faith (objective) intent to use the mark. Examples of objective evidence include business plans, product or service research or development, market research, manufacturing activities, steps to acquire distributors, steps to obtain required governmental approval, or other similar activities.
If an intent to use applicant does not create a business plan, engage in research and development, or engage in some of the other activities listed above, a party challenging the intent to use application in the Trademark Trial and Appeal Board (“TTAB”) or other tribunal may point to a lack of objective evidence and allege that the applicant lacked a bona fide intent to use the given mark in commerce. If the applicant does not possess documentary evidence to prove their objective intent to use the given mark in commerce, the applicant must come forward with evidence which would adequately explain or outweigh the failure to have documentary evidence. If the TTAB does not accept the applicant’s explanation regarding their lack of documentary evidence, the opposition proceeding may be sustained and the application refused.
Instead of relying on an explanation regarding why no objective documentary evidence exists, the better practice is for intent to use applicants to create and maintain a file with objective documentary evidence supporting their bona fide intent to use a trademark in commerce prior to filing their application. This practice can shield intent to use applicants and applications from “lack of bona fide intent to use” arguments and, in the worse case, refusal of an application by the TTAB.
The foregoing is a general overview of filing intent to use trademark applications with the PTO, and is in no way meant as an exhaustive discussion of this issue or as legal advice.
Watson Rounds, www.watsonrounds.com
