Bona Fide Intent to Use a Trademark in an Application

by | Feb 28, 2014 | Trademark Law

Enhancing Trademark Applications: Understanding In-Use and Intent-to-Use Trademarks in the United States

In the realm of trademark applications within the United States, two distinct categories come into play:

  1. In-use trademarks
  2. Intent-to-use trademarks.

In-Use Trademarks

An in-use trademark application is straightforward—it involves a person or business utilizing a trademark linked to goods and/or services already in active commerce. For such applications, the applicant must demonstrate the actual use of the mark in the sale or transport of goods or the provision of services in “interstate” commerce. This refers to commerce conducted between more than one state or U.S. territory or in transactions between the U.S. and another country.

For goods, the mark must be visibly present on the products, such as tags, labels, containers, or associated displays. In the case of services, the mark must be actively employed in the sale or advertising of those services.

Trademark Application

Intent-to-Use Trademarks

In contrast, if an applicant plans to use the mark in the future but has not done so yet, they can file a trademark application based on a good-faith or bona fide intent to use the mark in commerce. This implies more than a mere idea but less than being market-ready. Examples of demonstrating a bona fide intent include having a business plan, creating sample products, or undertaking preliminary business activities.

An illustrative case, Lincoln National Corporation v. Kent G. Anderson, Opposition Nos. 91192939 and 91194817 (February 21, 2014) [not precedential], sheds light on establishing a bona fide intent. The Trademark Trial and Appeal Board, in this case, emphasized the importance of a realistic goods/services description. It cautioned against overly extensive lists that may render it “highly unlikely” for the applicant to introduce all listed services during the application’s pendency. In essence, the goods or services listed must align with realistic business plans.

For those contemplating filing a trademark application without current use, it is permissible. However, maintaining a realistic list of goods or services in your business plan becomes crucial.

Watch this video blog for deeper insights into the necessity of incorporating business plans when filing a trademark application based on an intent to use.

Do you have any questions on your trademark application?  Contact us at anthony@vernalaw.com or call 914-908-6757.

Here is a video blog on the need to have business plans in filing a trademark application that has a basis of an intent to use: