What is intent to use?
In order to understand what something is not, it helps to begin with what it is. Intent to use refers to a trademark applicant’s intention to use a trademark in commerce. This intention forms the basis for filing a trademark application especially when the mark has not yet been used. A bona fide intent to use refers to a sufficient degree of intent that means something more than any intent. In other words, what is the extent of the intent? Is the degree of intent supported by objective documentary evidence?
What is a lack of bona fide intent to use?
Bona fide means in good faith, genuine, authentic. It is the opposite of deception or fraud. In the context of an ITU application, the applicant’s intent to use the trademark in the future sales of the goods or services identified in the application must be bona fide.
The inquiry is objective, meaning that the applicant’s subjective state of mind is not the deciding factor. What has been a common factor in the successful challenges of ITU applications in the lack of documentary evidence on behalf of the applicants regarding their plans to use the mark.
Practical alternatives to claiming fraud
One of the main reasons why lack of bona fide ITU matters is because fraud is so difficult to prove. Opposing a trademark application on the grounds of fraud will likely lead to an extremely difficult challenge that is rarely granted by the TTAB.
Therefore, challenging an ITU application on the basis of a lack of bona fide ITU is much more viable option. An opposer can seek key facts during discovery to pave the way for a successful trademark opposition.
What are examples of lack of bona fide intent to use?
Here are examples where trademark applications have been defeated due to the lack of bona fide intent to use:
- no business plans
- no commencement of advertising or marketing
- mere trademark searches and filing of trademark application without more is insufficient show intent
- activity outside the US, but not within the US
- overly broad extensive identification of goods and services by foreign applicant
- high number of classes of goods and services
What are examples of bona fide ITU?
Here are examples where the applicant provided sufficient evidence of a bona fide intent: