What Does it Mean to File an Intent-to-Use Trademark Application?

by | Oct 25, 2016 | Trademark Law

Intent to Use Trademark Applications

Filing a trademark application at the United States Patent and Trademark Office (USPTO) involves strategic choices regarding the basis for registration, which determines the priority date and potential common-law trademark rights. The two primary filing bases are:

1. Bona Fide Intent to Use

When filing under the basis of having a bona fide intent to use a trademark in interstate commerce (an ITU application), the trademark applicant commits to eventually utilizing the mark. It’s crucial to note that ownership of the trademark does not commence until the registration process is completed. The application, under Trademark Act Sec. 1(b), must be filed by the entity entitled to use the mark in commerce on the application filing date. Before registration, the applicant must submit an Amendment to Allege Use or a Statement of Use after the USPTO issues a Notice of Allowance, confirming ownership of the mark before the trademark registration is granted.

In this scenario:

  • Ownership arises through use of the mark.
  • The application must be filed by the party entitled to use the mark at the filing date.
  • Verification of a bona fide intention to use the mark in commerce is mandatory (filing the evidence of use, called a trademark specimen) and the date of first use of the mark and the specimen.

2. Actual Use in Commerce

Contrastingly, an actual use application , based upon use in interstate commerce (or foreign commerce or intrastate commerce if it is commerce Congress can regulate), filed under Trademark Act Sec. 1(a), must be submitted by the entity that already owns the mark on the application filing date. Unlike the bona fide intent basis, ownership is established immediately upon filing.

Key points to consider:

  • The mark must be in use as of the application filing date.
  • No amendment or statement of use is required to confirm ownership, as it is inherent in the filing.

Critical Distinctions

It is essential to grasp the profound disparities between filing under a bona fide intent to use and filing with a mark already in use:

  • Ownership rights do not materialize with a mere intent to use filing.
  • An additional fee must be paid with the Statement of Use.  An applicant can file an extension request – for an extra six months per extension request.  The applicant can make four such requests, each one at an additional fee.
  • The mark must be actively used in commerce to claim ownership.
  • Failure to have the bona fide intention to use the mark at the time of filing renders the application void.

Understanding these distinctions ensures that applicants make informed decisions based on their current use status, preventing complications and securing their trademark rights effectively.

 

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

 

Case lessons:

The case Volvo Trademark Holding AB v. CKL Holdings N.V., decided on May 26, 2020 by the Trademark Trial and Appeal Board, involves issues of trademark likelihood of confusion and the protection of well-known trademarks under international and national trademark laws

A bona fide intent to use a trademark must be in documentary evidence at the time of filing the ITU trademark application.  

We turn next to whether Opposer has established that there is no genuine dispute of material fact on the claim that Applicant lacked a bona fide intent to use the mark in commerce when it filed his involved application. As noted supra, Applicant filed its application under Trademark Act Section 44(d), 15 U.S.C. § 1126(d), and amended the filing basis to Trademark Act Section 1(b) during ex parte prosecution. An applicant who has applied for registration under Trademark Act Section 44(d) of the Lanham Act, claiming priority based on a registration of his mark in a foreign country, must, in his United States application, verify, in writing, that he has a bona fide intent to use the mark in United States commerce. Trademark Rule 2.34(a)(4)(ii); 37 C.F.R. § 2.34(a)(4)(ii).

In determining whether an applicant under Section 44(d) has the requisite bona fide intent to use the mark in United States commerce, we use the same objective analysis of good faith used to determine whether a Section 1(b) applicant has the required bona fide intent to use the mark in United States commerce. See Lane Ltd. v. Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994). Our primary reviewing court has stated that

whether an applicant had a “bona fide intent” to use the mark in commerce at the time of the application requires objective evidence of intent. Although the evidentiary bar is not high, the circumstances must indicate that the applicant’s intent to use the mark was firm and not merely intent to reserve a right in the mark.

M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1898 (Fed. Cir. 2015) (emphasis added). An applicant’s bona fide intent to use a mark must reflect an intention that is firm, though it may be contingent on the outcome of an event (that is, market research or product testing) and must reflect an intention to use the mark “‘in the ordinary course of trade, … and not … merely to reserve a right in a mark.”’ Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993) (quoting Trademark Act Section 45, 15 U.S.C. § 1127, and citing Senate Judiciary Comm. Rep. on S. 1883, S. Rep. No. 515, 100th Cong., 2d Sess. 24-25 (1988)).

“[A]bsent other facts which adequately explain or outweigh the failure of an applicant to have any documents supportive of or bearing upon its claimed intent to use its mark in commerce, the absence of documentary evidence on the part of an applicant regarding such intent is sufficient” to establish that there was no bona fide intent to use the mark when the involved application was filed. Id. In determining the sufficiency of documentary evidence demonstrating bona fide intent, “the focus is on the entirety of the circumstances, as revealed by the evidence of record.” See Lane Ltd., 33 USPQ2d at 1355. By pointing to Applicant’s lack of documentary evidence to support its claim of bona fide intent in its application, Opposer has made a prima facie showing that there is no genuine dispute that Applicant lacked the requisite bona fide intent when the involved application was filed. See Commodore Electronics, 26 USPQ2d at 1507. Unless rebutted, that showing suffices to establish Opposer’s entitlement to summary judgment on the no bona fide intent to use claim. To raise a genuine issue of material fact to counter Opposer’s summary judgment showing, Applicant must point to specific evidence in the summary judgment record to explain or outweigh its lack of documentary evidence of bona fide intent, or which would otherwise establish that it had the requisite bona fide intent to use the mark when it filed the application. See id.

 

This case was decided because the Trademark Trial and Apppeal Board decided that the ITU applicant did not have a bona fide intent to use the trademark at the time of filing because the applicant was unable to produce enough documentary evidence showing a bona intent to use the trademark in interstate commerce.  

 

The case BBK Tobacco & Foods LLP v. Central Coast Agriculture, Inc., decided on April 1, 2024, by the United States Court of Appeals for the Ninth Circuit, is significant for its interpretation of trademark law, particularly regarding the likelihood of confusion standard and fair use defense in the context of product branding and marketing.

Importance of the Case

  1. Trademark Infringement Analysis: This case reinforces and clarifies the application of the likelihood of confusion standard, which is crucial in determining trademark infringement cases. It examines factors like the similarity of the marks, the strength of the plaintiff’s mark, and evidence of actual confusion.

  2. Fair Use Defense: The decision provides guidance on the fair use defense in trademark law, specifically how descriptive use of a trademark in marketing materials can be considered non-infringing if it meets certain criteria.

  3. Impact on Branding Practices: The ruling has implications for how companies brand and market their products, emphasizing the need for careful consideration to avoid potential trademark disputes.

Case Summary

Background: BBK Tobacco & Foods LLP, a company that sells tobacco-related products, filed a lawsuit against Central Coast Agriculture, Inc., claiming trademark infringement. BBK alleged that Central Coast’s use of similar branding and marketing materials created a likelihood of confusion among consumers regarding the source of the products.

District Court Decision: The district court ruled in favor of Central Coast Agriculture, finding that the branding differences were sufficient to avoid consumer confusion and that Central Coast’s use of the contested mark was descriptive and constituted fair use.

Ninth Circuit Decision: On appeal, the Ninth Circuit affirmed the district court’s decision. The appellate court analyzed the likelihood of confusion factors, including the similarity of the marks, the relatedness of the goods, and the marketing channels used. It concluded that there was no significant risk of consumer confusion. Additionally, the court upheld the fair use defense, noting that Central Coast’s use of the mark was descriptive and necessary to describe its products.

Conclusion: The Ninth Circuit’s decision underscores the importance of a detailed, factor-by-factor analysis in trademark infringement cases and affirms the legitimacy of the fair use defense when used appropriately. This case serves as a critical reference for companies navigating trademark law and seeking to protect their branding while avoiding infringement claims.

 

Case excerpt:

Lack of bona fide intent is a valid basis to seek cancellation of a trademark application.

An applicant can seek to register a mark under two alternative bases: (1) if a mark is already being “used in commerce;” and (2) if the applicant has “a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce.” 15 U.S.C. § 1051(a)(1), (b)(1). While intent-to-use applicants “can begin the registration process having only a sincere intent” to later use the mark in commerce, “the [Lanham Act] also requires that applicants filing such intent-to-use applications must in due course either (i) file a verified statement of actual use of the mark, or (ii) convert the application into a use application.” M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1375 (Fed. Cir. 2015) (citing 15 U.S.C. § 1051(b)(3), (c), (d)).

Three of our sister circuits and the Trademark Trial and Appeal Board have held that “lack of a bona fide intent is proper statutory grounds on which to challenge a trademark application.” Id.; see Kelly Servs., Inc. v. Creative Harbor, LLC, 846 F.3d 857, 863–64 (6th Cir. 2017); Aktieselskabet AF 21. Nov. 2001 v. Fame Jeans Inc., 525 F.3d 8, 21 (D.C. Cir. 2008); L’Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434, 2012 WL 1267956, at *11 (T.T.A.B. 2012). We agree. As the Federal Circuit explained, because “[a]n opposer is ‘entitled to rely on any statutory ground which negates [an applicant]’s right to the subject registration,’ ” M.Z. Berger, 787 F.3d at 1375 (quoting Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1031 (C.C.P.A. 1982)), lack of bona fide intent “is a proper basis on which an opposer can challenge an applicant’s registration,” id. We thus make explicit what is already clear from the statutory text and hold that lack of bona fide intent to use a mark in commerce is a ground on which a party may oppose a trademark application.

 

The case Row, Inc. v. Rooke, LLC, decided on September 20, 2018, by the United States Court of Appeals for the Sixth Circuit, involves issues of trademark infringement and unfair competition under the Lanham Act.

Importance of the Case

  1. Trademark Infringement: This case is significant for its analysis of the likelihood of confusion standard in trademark infringement disputes. It provides insights into how courts evaluate the similarity of marks, the strength of the plaintiff’s mark, and evidence of actual confusion.

  2. Unfair Competition: The decision underscores the importance of fair business practices and the legal remedies available to businesses that suffer from unfair competition.

  3. Lanham Act Interpretation: The ruling offers guidance on the application of the Lanham Act, particularly in cases involving competing businesses in similar markets.

Case Summary

Background: Row, Inc., a company that manufactures and sells rowing machines, filed a lawsuit against Rooke, LLC, alleging trademark infringement and unfair competition. Row, Inc. claimed that Rooke, LLC’s use of a similar mark on its rowing machines created a likelihood of confusion among consumers.

District Court Decision: The district court ruled in favor of Row, Inc., finding that Rooke, LLC’s use of the similar mark was likely to cause confusion and thus constituted trademark infringement. The court also found Rooke, LLC liable for unfair competition under the Lanham Act.

Sixth Circuit Decision: On appeal, the Sixth Circuit affirmed the district court’s decision. The appellate court conducted a thorough analysis of the likelihood of confusion factors, including the similarity of the marks, the strength of Row, Inc.’s mark, and evidence of actual confusion. The court found that the similarities between the marks and the products’ market channels supported the likelihood of confusion. Additionally, the court upheld the finding of unfair competition, emphasizing the importance of protecting consumers and businesses from deceptive practices.

Conclusion: The Sixth Circuit’s decision in Row, Inc. v. Rooke, LLC highlights the critical role of trademark protection and the legal standards for determining likelihood of confusion in trademark disputes. The case serves as an important precedent for businesses seeking to protect their trademarks and ensure fair competition in the marketplace.

Here was a trademark application that started as an ITU application.  Despite being that type of trademark application, it matured to a full registration and the likelihood of confusion analysis did not change because of its original status.                                                 

Case excerpt:

The Row also seeks cancellation of the Whiskey Row mark under the Lanham Act, 15 U.S.C. § 1119. The district court properly determined that, because The Row failed to show that Rooke infringed on its trademark, its cancellation claim failed as well. See Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419, 425 (6th Cir. 1999) (“Our holding on [the plaintiff’s] trademark infringement claim, that there is not a likelihood of confusion, necessarily precludes cancellation of [the defendant’s] mark.”).

 

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