by Zachare J. Wadle

United States trademark law provides for the filing of trademark applications to protect (or reserve) trademarks which are not yet actually in use in commerce. The law will allow for filing of a trademark application, with the benefit of constructive use and priority, based upon the  
Applicant’s “bona fide intent to use” a mark. The question then becomes what constitutes “bona fide intent to use a mark?”

The U.S. Trademark Trial and Appeal Board’s recent decision in Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) demonstrated the consequences of not showing the requisite “bona fide intent to use a mark” in connection with an “intent to use” trademark application. In this case, the Board sustained Honda’s opposition to Herr Winkelmann’s “intent to use” application to register the mark “V.I.C.” for vehicles, ruling on summary judgment that Winkelmann had failed to establish the requisite bona fide intent to use his mark in the United States. To avoid Mr. Winkelmann’s situation Applicants must engage in activities that readily establish their “bona fides” with respect to the proposed mark. Activities that have been deemed demonstrative of a bona fide intent to use a trademark in commerce include:

  • conducting a trademark availability search
  • performing preparatory graphic design work or labeling on sales material for a product;
  • using a mark in international jurisdictions
  • using a mark in test marketing
  • testimony regarding informal, unwritten business plans or market research
  • obtaining necessary regulatory permits
  • obtaining a correlative domain name for the mark or setting up a website
  • making contacts with individuals who might help develop a business;
  • correspondence mentioning the planned use of the mark
  • attempts to find licensees, including ones outside of the U.S.
  • obtaining commercial space in which to perform the services

Factual circumstances that have been deemed demonstrative of a lack of a bona fide intent to use include:

  • an unrealistically broad listing of goods and services;
  • a defensive intent to prevent others from using the mark;
  • the filing of numerous intent-to-use applications without ever using them or subsequently abandoning them;
  • the absence of any steps or planning to use the mark;
  • lack of industry-relevant experience;
  • misrepresentation of goods or services in order to reserve a mark

The bona fide intent to use a trademark may be simply sworn to in the application. However, that sworn intent is ideally bolstered by verifiable documents (corporate minutes, trademark search reports, plans, contracts, etc.) that affirmatively demonstrate such intent. Once a trademark application is filed with intent to use, and the intended mark has been approved, published for opposition and allowed by the United States Patent and Trademark Office, the Applicant has six months in which to verify actual use and submit specimen of such actual use. This six month period can, under proper circumstances, be extended up to a maximum of two years.

If you have future plans to use a certain trademark, you may be in a position to establish priority in the mark before expending large sums related to the mark for advertising, designing, printing, etcetera. It is not proper, however, to file an intent to use application if you are simply trying to "tie up" the name so a competitor cannot use it, and have no real intention to use the mark yourself. But, if you have a bona fide intent to use the mark at some point in the future, it may make sense to reserve the mark sooner rather than later, so a competitor cannot claim rights to the mark during the pendency of your development of the mark.