A trademark application can be filed under several bases in order to determine the priority date once the mark is registered or if common-law trademark rights are asserted. The two most common filing bases are 1) having a bona fide intent to use a trademark in interstate commerce or 2) actual use of a trademark in interstate commerce.
Filing a mark when the applicant has a bona fide intent to use a mark in commerce, the applicant must show the use of the mark eventually. This means that the applicant does not own a trademark until the registration is processed.
An application based on use in commerce must be filed by the party which owns the mark on the application filing date. Trademark Act Sec. 1(a). In an application based on an allegation of an intent to use, before the mark can be registered the applicant must file an amendment to allege use or a statement of use which states that the applicant is the owner of the mark. Trademark Act Sec. 1(b); Trademark Rules 2.76(b)(1)(i) and 2.88(b)(1)(i).
Because in an intent to use application the mark has not yet been shown to be used as a mark, and because ownership of a mark arises through use of the mark, Trademark Act Sec. 1(b) does not refer to “the owner of a trademark,” as does Trademark Act Sec. 1(a). Am. Forests v. Sanders, 54 USPQ2d 1860, 1861-1862 (TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000). An intent to use application must be filed by the party entitled to use the mark in commerce on the application filing date, and the application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. Trademark Act Sec. 1(b). When the person designated as the applicant was not the person with a bona fide intention to use the mark in commerce at the time the application was filed, the application is void. Am. Forests v. Sanders, 54 USPQ2d at 1864.
This means that an applicant should be aware of the very radical differences between filing a trademark application with a bona fide intent to use a trademark in interstate commerce instead of filing a trademark application with a mark that is already used in commerce. The applicant cannot claim ownership of a trademark when the application is only filed with the bona fide intent. The applicant must actually use the mark in commerce.
About Me
Recent Posts
- Video Blog: Super Bowl Time! Here are some trademark facts from a lawyer who has fought the NFL several times in court over trademark matters.
- Video Blog: Lizzo tries to register 100% That Bitch as a trademark – denied at first, allowed in the end. Why?
- Video Blog: Thoughts on the OkGo-Post Trademark Infrignement Lawsuit
- Law and Business Podcast Episode 62: Heather and Anthony Talk about Domain Names
- Law And Business Episode 61 with Heather Abissi – Revenge Porn
Archives
- February 2023
- September 2022
- August 2022
- January 2021
- December 2020
- June 2020
- April 2020
- March 2020
- February 2020
- January 2020
- December 2019
- October 2019
- September 2019
- August 2019
- July 2019
- June 2019
- May 2019
- April 2019
- March 2019
- January 2019
- December 2018
- October 2018
- September 2018
- August 2018
- February 2018
- December 2017
- September 2017
- August 2017
- May 2017
- April 2017
- March 2017
- February 2017
- January 2017
- December 2016
- November 2016
- October 2016
- September 2016
- May 2016
- March 2016
- February 2016
- November 2015
- October 2015
- September 2015
- August 2015
- June 2015
- April 2015
- December 2014
- October 2014
- September 2014
- June 2014
- May 2014
- April 2014
- March 2014
- February 2014
- January 2014
- December 2013
- November 2013
- October 2013
- September 2013
Recent Comments