How Does an Applicant Prove a Bona Fide Intent to Use a Trademark
When an Applicant files a trademark application with the United States Patent & Trademark Office ("USPTO") it must indicate a statutory basis for filing the application. One of those statutory bases includes possessing a bona fide intent to use the trademark in commerce with the goods or services identified in the application. See our webpage entitled, Determining Which Filing Basis Is Appropriate For Your Trademark Application, to learn more about the five filing bases. Many trademark applicants select this filing basis to rely on when applying to register a trademark, but do not fully understand what it means to "legally" possess a bona fide intent to use the mark in commerce.
The Federal Circuit has affirmed that the determination of whether an applicant lacks the bona fide intent to use the mark on the goods or services in commerce is an objective determination based on the totality of the circumstances. The Opposer will bear the initial burden of demonstrating by a preponderance of the evidence that there is an absence of a bona fide intent to use the mark in conjunction with the goods or services. This is commonly accomplished by showing a lack of documentary evidence on the part of the Applicant.
The Applicant will receive an opportunity to rebut the evidence showing a manifestation of intent. It is best if the documentary evidence predates the date on which the Applicant filed the application. However, this is not necessary. See Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351 (TTAB 1994). . See also, Swiss Grill Ltd., John Hartwig, Christopher Hartwig and Matthew Hartwig v. Wolf Steel Ltd ., 115 USPQ2d 2001 (TTAB 2015) [precedential]. If the Applicant's discovery responses are inconsistent, this will cast doubt on the strength of the Applicant's case and the Board will have reason to question the Applicant's credibility. Subjective claims of intention without documentary proof are not sufficient to satisfy the bona fide intent to use standard.
An Applicant should maintain written records of the efforts made to use the mark with the goods or services in commerce. Some examples of evidence may include: (1) promotional or marketing materials; (2) screen shots of websites that may use the mark with the goods or services; (3) packaging of the goods or proposed artwork for the packaging; (4) emails or other documentation showing steps in furtherance of manufacturing the goods; (5) documentation demonstrating steps towards acquiring governmental approval; (6) proof of product or service research; (7) purchase orders or invoices for the goods or services; (8) licensing agreements; (9) written correspondence with prospective distributors or licensees; (10) business plans affiliated with the goods or services; (11) permits or licenses required by a governmental authority; or (12) notes or emails in connection with business meetings discussing the branding of the goods or services. The documentation should reference the trademark and not simply refer to a general class of goods or services.
Recent cases from the Trademark Trial and Appeal Board (the "TTAB" or "Board") have led trademark practitioners in the direction that requires additional counsel and dialogue before each client files an intent-to-use application. A discussion should ensue wherein an inquiry is made as to whether your client possesses documentation to support its bona fide intent. Subsequently, clients should be advised that they must document all steps taken in furtherance of bringing the goods and services to the marketplace under the brand. The Board seems to ease up on the stringent requirements of documentation in cases where credible testimony is presented and supportive of the Applicant expanding an already existing product line. See Hard Candy Cases, LLC v. Hard Candy, LLC, Opposition No. 91195328 (November 13, 2014). See also our blog post entitled, Should Entire Application Be Voided If A Bona Fide Intent To Use A Mark Is Lacking, to review how the courts and the Board resolve this matter. If you are planning on filing an intent-to-use trademark application, please contact our office for a courtesy consultation.