Documenting “Intent to Use” for Trademark Registration Applications

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The USPTO allows business owners to apply for registration of new trademarks before they are used, as long as the business has a “bona fide” intent to make use of the trademark in commerce. This is an important benefit that business owners ought to take advantage of when developing new brands or product/service lines.

To do so, however, the business must actually have the requisite “bona fide” intent. Trademark registration applications cannot be used simply to reserve rights in a “desirable” trademark, or to prevent a competitor from getting there first. Improper registration applications may face opposition from competitors, and these oppositions will generally be successful if the applicant cannot affirmatively demonstrate their “bona fide” intent.

A recent case from the Trademark Trial and Appeal Board of the USPTO makes this point clear. In Spirits Int’l B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, Opposition No. 91163779, 99 U.S.P.Q.2d 1545 (TTAB 2011), the TTAB sustained an opposition filed against a pending “intent to use” trademark registration application where the applicant “supplied no documentary evidence regarding its intent to use its mark on” the identified goods. Thus, as the case demonstrates, “intent to use” applicants should develop and maintain a record of documents, files and communications preceding the application date that support their assertion of “bona fide” intent.

Examples of documentation that can be used to support a “bona fide” intent claim in the event of an opposition filing include, among others:

>Draft marketing and promotional materials
>Draft business plans and white papers
>Presentation materials for potential investors
>Board meeting minutes
>Internal communications concerning the trademark
>Other records that demonstrate genuine contemplation of adopting the trademark

It is not unusual for many of these records to be created and maintained in the ordinary course of business.

By taking advantage of the benefits afforded by “intent to use” trademark registration applications in accordance with the USPTO’s filing requirements, business owners can protect their trademarks before unveiling them on the market.

Jeff Fabian assists business owners in protecting their brands so that they can stay focused on running their businesses. Visit www.fabianip.com for more information, and follow Jeff on Twitter @FabianOnIP.

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