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.  

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.