Prior to November 1989, applicants were required to initiate use in commerce of its mark prior to filing a trademark application with the United States Patent and Trademark Office (USPTO). Once the U.S. joined the international Madrid Protocol, though, the USPTO extended potential protection to applicants that wished to file an application before they commenced use of a mark with goods or services in interstate commerce, much like the majority of international trademark systems. Today, a significant number of trademark applicants file “intent to use” (ITU) applications in this manner. The key advantage to filing an ITU application, rather than waiting for use in commerce to begin, is that the applicant receives the benefit of the filing date as their “constructive use” date for purposes of nationwide priority. An ITU application does not mature into a registration, though, until a statement of use is filed and accepted by the USPTO.
Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b), 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.” The applicant must submit a verified statement that it has a bona fide intent to use the mark. While the USPTO will usually accept a party’s sworn statement without question or investigation for the purpose of approving its application, the issue of whether an applicant has a bona fide intent is frequently presented in a challenge raised by a third party, such as a later applicant that wishes to knock out a prior party’s ITU application. The failure to overcome this defense may result in a successful opposition or cancellation, eliminating any federal rights in the mark.
To meet the “bona fide” intention requirement, the applicant must present evidence of an objective, not merely subjective, good faith intent to use. This standard has been refined after several decisions from the Trademark Trial and Appeal Board. For instance, in Spirits International B.V. v. S.S. Taris Zeytin, 99 U.S.P.Q.2d 1545 (T.T.A.B. 2011), the applicant failed to present any documentary evidence of its intention to use its mark with spirits, stating in an interrogatory response that only olive oil is sold under the mark in the United States. Finding that the opposer had met its initial burden of demonstrating by a preponderance of the evidence that the applicant lacked intent to use on the filing date of the application, it sustained the opposition. Similarly, in Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 U.S.P.Q.2d 1660 (T.T.A.B. 2009), the applicant failed to provide any responsive documents in discovery to a request for information relating to the applicant’s intent, even stating that “no such documents exist.” Lacking any objective evidence, the Board granted summary judgment for the opposer.
While challenges to a prior applicant may have previously focused on the doctrine of fraud on the USPTO, that standard has become a much higher hurdle after the Federal Circuit’s decision in In re Bose Corp., 91 U.S.P.Q.2d 1938, 1939 (Fed. Cir. 2009) (“Fraud in procuring a trademark registration or renewal occurs when an applicant knowingly makes false, material representations of fact in connection with his application.”). For ITU applications, though, lack of a bona fide intent to use a mark remains a potent weapon. Thus, to avoid potentially losing an ITU application and the priority date attached to same, an applicant should be prepared with evidence of a bona fide intention to use its mark, such as research and development, market research, manufacturing activities, steps to acquire distributors, steps to obtain required governmental approval, or other similar activities.