Many people and small businesses apply for a trademark under Section 1(b) of the Trademark Act, in which the applicant affirms that the applicant has a bona fide intent to use the trademark applied for in commerce.  Section 1(b) of the Trademark Act says specifically “A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may apply to register the trademark under this Act….”

Many applicants believe that just filing for the trademark application and checking the 1(b) box is enough.  However, that is far from the truth.

Quite often, an opposition proceeding in the Trademark Trial and Appeal Board (TTAB) contains a challenge to the bona fide intent to use the mark in commerce.  What is the standard to show that an applicant does have the intent?

In determining the sufficiency of documentary evidence needed to demonstrate bona fide intent, the Board has held that the Trademark Act does not expressly impose “any specific requirement as to the contemporaneousness of an applicant’s documentary evidence corroborating its claim of bona fide intention. Rather, the focus is on the entirety of the circumstances, as revealed by the evidence of record.” Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1356 (TTAB 1994).  The statutory requirement that the applicant must have a bona fide intent to use the mark in commerce at the time the application is filed “must be read in conjunction with the revised definition of ‘use in commerce’ in Section 45 of the Trademark Act, which the Trademark Law Revision Act of 1988 (TLRA) amended to require that such use be ‘in the ordinary course of trade, and not made merely to reserve a right in a mark.”’ Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993).

The TTAB has “repeatedly found” a lack of bona fide intent to use a mark where individuals lack the capacity to produce the goods identified in the application. Swatch AG vs. M.Z. Berger & Co., 108 USPQ2d at 1463 at 1477; see L’Oreal S.A. v. Marcon, 102 USPQ2d 1434 (TTAB 2012); Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1726-27 (TTAB 2010); Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1643 (TTAB 2007).

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 such as market research or product testing, and must reflect an intention to use the mark in the ordinary course of trade. Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1506 n.7 (TTAB 1993).

If opposer satisfies its initial burden of showing the absence of documentary evidence regarding applicant’s bona fide intention to use the mark, the burden of production shifts to applicant to come forward with evidence adequately explaining or outweighing the failure to provide such documentary evidence. See Commodore Electronics, 26 USPQ2d at 1507 n.11. In other words, under some circumstances, the lack of documents evidencing a bona fide intent to use the mark may not be dispositive.

The Board has “repeatedly found” a lack of bona fide intent to use a mark where individuals lack the capacity to produce the goods identified in the application. Swatch, 108 USPQ2d at 1477; see L’Oreal S.A. v. Marcon, 102 USPQ2d 1434 (TTAB 2012); Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1726-27 (TTAB 2010); Wet Seal, Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1643 (TTAB 2007). Applicant’s unsupported statement of his intent to use his mark and his denial that he lacked a bona fide intent — both unsworn and entirely lacking in factual detail — are insufficient to raise a genuine dispute of material fact regarding applicant’s bona fide intent to use a mark. See Saul Zaentz Co., 95 USPQ2d at 1726-27.  However, a party’s capacity to actually produce and offer for sale the identified goods weighs in favor of a finding that the party did possess a bona fide intent to use the mark in commerce as of the date its application was filed. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1643 (TTAB 2007) (capacity to market and/or manufacture goods, having produced them in the past under different marks, rebuts claim that applicant lacked bona fide intent to use). Cf. Lincoln Nat’l Corp. v. Anderson, 110 USPQ2d 1271, 1278 (TTAB 2014).

What does all this mean?  Of course, the legalese above does demonstrate a few points:

  • In order to show a bona fide intent to use a trademark in commerce, an applicant should be able to produce some plans, “mock-ups”, market research, or product testing.
  • That documentary evidence should show the mark as it could be used in commerce.
  • Lacking that, an applicant should have the capacity to make the goods or provide the services that are a part of the trademark application.