An aspect of United States trademark law, as it applies to seeking federal trademark registration, that many, if not most, brand owners have not come to appreciate is the notion of a “bona fide intent” to use a trademark in U.S. commerce. Under U.S. trademark law, a brand owner may file a U.S. trademark application after or before its mark has been put to use in U.S. commerce. As long as a brand owner has a bona fide intent to use a mark in U.S. commerce as of the trademark application filing date, it may file an intent-to-use trademark application under Section 1(b), an application based upon a foreign registration under Section 44(e) and/or an application, via the Madrid Protocol, based upon a foreign application or registration under Section 66(a), of the Trademark Act.
U.S. Trademark Act Section 1(b) (15 U.S.C. §1051(b)), states that “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 for registration of a mark.” Likewise, Trademark Act Sections 44 and 66, which apply specifically to foreign applicants, also require that foreign applicants have a bona fide intention to use their marks in U.S. commerce by the date on which they file their U.S. trademark applications.
There are several reasons why domestic and foreign brand owners file “intent to use” trademark applications instead of waiting until their marks have been put to use. One reason is to “reserve” their “marks” with the United States Patent and Trademark Office prior to actual trademark use while they, for example, create branding strategies, make contracts with manufacturers, undertake product research and development and negotiate with licensees. Another reason to file an intent-to-use trademark application prior to a mark’s use is to see whether the Office will reject the mark’s registration based upon substantive grounds (i.e., likelihood of confusion with a third party mark and/or non-distinctiveness). In any event, a trademark owner relying on the intent to use filing basis of Section 1(b) still must put its mark to use before a registration certificate can issue.
In addition to the intent to use filing basis of Section 1(b), foreign applicants may rely upon Sections 44(e) and 66(a) of the Trademark Act to secure registration simply because they may do so without having to actually use their marks in United States commerce. However, in order to maintain their registrations, they still must put their marks to use by the 6th year anniversary of their respective registrations or the Office would cancel them on the ground of non-use. Although foreign applicants may secure registration without ever having used their respective marks in the United States, they still must have a bona fide intent of using their marks in the United States as of the trademark application filing date.
Accordingly, for whatever the reason, a U.S. trademark applicant filing an application requiring a bona fide intent to use the mark must have a bona fide intent to use the applied-for mark in U.S. commerce on or in connection with the goods and/or services listed in an application as of the application filing date.
Failing to have the prerequisite bona fide intent to use the applied-for mark in U.S. commerce by the date on which an application is filed may result in a third party challenge to the validity of a pending trademark application, an issued trademark registration and even an applicant’s legal right to continue to use the applied-for trademark in the United States. Although a brand owner may believe that it owns valid and proprietary rights in a certain trademark due to it’s recently filed and approved trademark application or issued registration that was based upon a trademark application requiring bona fides, it may, in actuality, have no enforceable trademark rights. Such potential misfortune, however, would likely only become relevant should a third party challenge the validity of an application or registration on the ground of a lack of bona fides.
Third party attacks on the validity of a trademark application or registration – and ultimately potentially on the validity of the mark itself - on the basis of a lack of bona fides may arise in the context of trademark registration opposition and registration cancellation proceedings before the United States Trademark Trial and Appeal Board – the administrative Board for the Trademark Office (the “Board”). Trademark registration opposition and registration cancellation proceedings are similar to federal litigation, not only in terms of procedure but also in terms of expense, which can easily move well into six figures. Of great importance, and what can be of great concern for brand owners, is the fact that a trademark registration cancellation proceeding may be lodged against a trademark registration on the basis of priority of rights – and a claim for lack of bona fides – during the first five years of registration. Meaning that a third party could potentially successfully cancel a brand owners trademark registration, along with it its proprietary trademark rights, and possibly compel the discontinuance of the registered mark, which may result in the brand owner undertaking an expensive re-branding initiative, any time during the first five years of registration.
The Board has made clear that the absence of any documentary evidence on the part of an applicant regarding its intent-to use a mark in U.S. commerce constitutes objective proof that is sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce. The Board has also made clear that certain documentation in existence as of the application filing date, including marketing plans for a product launch, patent applications for the relevant products, board minutes reflecting discussions about a product launch, evidence of discussions with potential manufacturers and licensees will not, in and of themselves, prove that an applicant had a bona fide intent to use the applied-for mark if such documentation makes no mention of the applied-for mark. Such evidence, while establishing intent to launch a product, does not establish the prerequisite intent to use the applied-for mark for that product. Furthermore, the Board has stated that Congress did not intend the issue of lack of bona fides to be resolved simply because an officer of an applicant later testifies that applicant “had a bona fide intent to use the applied-for mark as of the application filing date.” Furthermore, the act of filing an intent to use application in and of itself does not meet the bona fides standard.
Brand owner A files an intent to use trademark application under Sections 44(d), 44(e) and 1(b) of the Trademark Act on January 1, 2010 for the mark Good ‘N Fresh for yogurt. The trademark examining attorney approves the mark for publication on April 1, 2011 and, as a result, Brand Owner A moves ahead and launches its line of yogurts nationally on April 15, 2011 under the mark Good ‘N Fresh.
On January 2, 2011, Brand Owner B files an intent to use trademark application under Section 1(b) of the Trademark Act for the mark Good And Fresh! for yogurt. Then on January 3, 2011 it begins to use its mark for yogurt. On July 1, 2011, the Office refuses registration of Brand Owner B’s trademark on the basis it is confusingly similar to Brand Owner A’s mark depicted in its previously filed trademark application (Good And Fresh! vs. Good ‘N Fresh).
Because Brand Owner A filed its intent to use trademark application before Brand Owner B filed its application, and because Brand Owner B cannot establish use of its mark Good And Fresh! before Brand Owner A’s application filing date, Brand Owner A’s pending application will likely bar the registration of Brand Owner B’s mark unless Brand Owner B is able to successfully object to Brand Owner A’s pending trademark application. Luckily for Brand Owner B, it already owns a federal trademark registration for the mark Good And Fresh! for fruits.
Once Brand Owner A’s mark is published for opposition, Brand Owner B files an opposition on the basis Brand Owner A’s mark Good ‘N Fresh for yogurt is confusingly similar to its mark Good And Fresh! for fruit. Brand Owner B also claims that Brand Owner A lacked a bona fide intent to use its mark in commerce as of its application filing date.
The opposition record later shows that Brand Owner A had no documentation in support of its bona fide intent to use its mark in commerce as of the application filing date. Based on that, the Board sustains Brand Owner B’s opposition and orders Brand Owner A’s application cancelled. Because Brand Owner B’s intent to use application was filed before Brand Owner A started using its mark Good ‘N Fresh, Brand Owner B, assuming its application is also not vulnerable to attack on any grounds, is able to “leap frog” over Brand Owner A’s “prior rights” – which were granted by its earlier-filed trademark application - and likely compel Brand Owner A to cease all use of its mark Good ‘N Fresh for yogurt.
Had Brand Owner A taken the time to prepare a marketing plan, which included the intended use of the mark Good ‘N Fresh, prepared artwork for product packaging depicting the applied-for mark, memorialized, in the minutes of a meeting, the intention to use the applied-for mark or created any other documentation able to establish its bona fide intent to use the applied-for mark prior to the filing of its intent to use application, it may have been able to defend the opposition proceeding filed by Brand Owner B and continue to use its mark Good ‘N Fresh. It would also have likely been able to prevent Brand Owner B from using its mark Good And Fresh! for yogurt.
Brand owners that base their U.S. trademark applications on filing basis that require a bona fide intent to use the mark must take notice of this issue and take those steps required under U.S. trademark law necessary to establish their bona fides – or potentially fall victim to third party challenges that may result in the loss of trademark rights and need to spend tens or even potentially hundreds of thousand of dollars to re-brand their products.
Brand owners that have filed applications with filing basis requiring a bona fide intent to use a mark may want to conduct an audit of their pending trademark applications and issued registrations to see whether it makes business sense to re-file fresh trademark applications for some of their marks in an effort to head off claims of “lack of bona fides” that could potentially result in the loss of valuable trademark rights.