What is intent to use?
To understand what something is not, begin with what it is. Intent to use refers to an intention by a person or company to use a trademark in commerce to sell certain goods or services. This intention forms the basis for filing a certain type of trademark application, called an ITU application, when the mark has not yet been used. A bona fide intent to use refers to a sufficient degree of intent to use a trademark. The degree of sufficiency must be more than simply any intent.
In other words, the extent of the trademark applicant’s intent must be significant and supported by evidence. If challenged, will you have objective documentary evidence to support the degree of your intent to use a particular trademark?
What is a lack of bona fide intent to use?
Bona fide means in good faith, genuine, authentic. It is the opposite of deceitful or fraudulent. In the context of an ITU application, the applicant’s intent to use the trademark in the future must be bona fide. Certainly the goods or services identified in an ITU trademark application will play a critical role in this analysis. For example, if an ITU application were to identify a rather ambitious product such as an automobile, how will the ITU applicant show a genuine intent to sell cars under the applied-for trademark?
The inquiry is objective, so the applicant’s subjective state of mind is not the deciding factor. What has been a common factor in successful challenges of ITU applications is the lack of documentary evidence on behalf of the applicants. The trademark filers could not produce evidence to support their plans to use the mark.
Practical alternative 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:
Need help filing a proper ITU trademark application?
Want to avoid making fatal mistakes in filing an ITU application? Reach out to trademark attorney Vic Lin by email or call (949) 223-9623. Save precious time by avoiding common mistakes made by do-it-yourself trademark filers.