Best Practices for Filing an Intent-to-Use Trademark Application

• Author: Victoria L. Burke - James L. Bikoff
• Position: James L. Bikoff is a partner at Smith, Gambrell & Russell and chairs the firm's International Trademark and Internet Practice Groups. He specializes in trademark and copyright litigation, registration and licensing matters, and Internet enforcement and counseling. He can be reached at jbikoff@sgrlaw.com. Victoria L. Burke is an attorney with ...
• Pages: 57-61

Published in Landslide® magazine, Volume 9, Number 6, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This

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Meeting of the Minds

An applicant can le for a trade-

mark on the basis of actual

existing use or on a bona de

intention to use a mark in the future.

The latter would require an intent-to-

use (ITU) application. Because proof

of use of a trademark in commerce is a

requirement for formal registration, an

ITU applicant would later have to le a

statement of use (SOU) form (accom-

panied by proof of use of the mark in

commerce) to convert an ITU applica-

tion to actual use.

Why Congress Included the Bona

Fide Intention to Use Provision

In 1988, Congress amended the Lan-

ham Act with the passage of the

Trademark Law Revision Act (TLRA),

which went into effect November16,

1989. One signicant change the TLRA

brought to the trademark practice was

allowing applicants to le a trademark

application on the basis of a bona de

intention to use, which also eliminated

applicants’ ability to rely on “token

use” of a mark.1 The TLRA provides

that “[a] person who has a bona de

intention, under circumstances show-

ing the good faith of such person, to use

a trademark in commerce2 may request

registration of its trademark.”3 This did

not eliminate the requirement to use

the mark in commerce before attain-

ing a trademark registration.4 Rather,

this change allows applicants to now

secure a ling date and establish prior-

ity before using the mark in commerce.

This new language in the Lanham

Act leveled the playing eld between

U.S. and international applicants.5 Prior

to this change, U.S. citizens had to prove

actual use of an applied-for mark, but

international applicants, under section

44e (Paris Convention), could estab-

lish priority in the United States simply

based on their existing foreign registra-

tions (obtained without showing use).6

After this change, applicants relying on

an international registration ling under

section 44e7 and section 66a (Madrid

Protocol)8 also have to submit verica-

tion of a bona de intention to use the

mark in commerce when registering that

mark with the United States Patent and

Trademark Ofce (USPTO).

What Makes an Intent-to-Use

Application Different

An applicant ling an ITU application

is able to secure a priority ling date

(i.e., constructive rst-use date) while

the product or service to be offered

under that mark is still in the devel-

opment phase.9 Before the TLRA, a

trademark applicant had to attest to and

sign a declaration that the applied-for

mark was actively in use in commerce

when seeking registration.10 However,

under the current language, some mis-

guided applicants believe ling an ITU

application reserves a right in a mark.

This is a misinterpretation of the law

because “an applicant’s intent must

reect an intention to use the mark con-

sistent with the Lanham Act’s denition

of ‘use in commerce’: ‘[T]he bona de

use of a mark in the ordinary course of

trade, and not made merely to reserve a

right in a mark.’”11

Difculties with an Intent-to-Use

Application

The ambiguous language in 15 U.S.C.

§1051(b)(1) has yielded a substan-

tial gray area in the law regarding what

qualies as a “bona de intention to

use” and exactly how much evidence is

sufcient to prove this intent. Addition-

ally, it is unclear what criteria would

amount to “circumstances” that dem-

onstrate “good faith.”12 In Lane Ltd.

v. Jackson International Trading Co.,

the Trademark Trial and Appeal Board

(TTAB) noted that “Congress, in draft-

ing the TLRA, purposely omitted a

statutory denition of the term ‘bona

de’ as used in the phrase ‘bona de

intention,’ in the interest of preserv-

ing ‘the exibility which is vital to

the proper operation of the trademark

registration system.’”13 However, the

legislative history gives a hint of what

is expected: “‘[B]ona de’ should be

read to mean a fair, objective determi-

nation of the applicant’s intent based

on all the circumstances.”14 Further, the

term “bona de” “can be read broadly

or narrowly, subjectively or objectively,

by a court or the Patent and Trade-

mark Ofce.”15 J. Thomas McCarthy

also weighed in on this matter, noting

that “the evidence is ‘objective’ in the

sense that it is evidence in the form of

real life facts and by the actions of the

applicant.”16

Additionally, timing is paramount

because the bona de intention to use

must exist when the application is led.17

Yet, as long as the applicant’s bona de

intention to use is objectively present at

the ling, the documentary evidence for

this intent does not necessarily have to

be contemporaneous with the actual l-

ing date.18 Hence, the intention to use a

mark—although formed by the time of

the ling—may be conditionally based

on the outcome of a future event related

to business development.19 Ultimately, the

totality of the circumstances will deter-

mine if an applicant had the necessary

bona de intention to use at the time of

James L. Bikoff is a partner at Smith, Gambrell & Russell and chairs the rm’s International

Trademark and Internet Practice Groups. He specializes in trademark and copyright

litigation, registration and licensing matters, and Internet enforcement and counseling. He

can be reached at jbikoff@sgrlaw.com. Victoria L. Burke is an attorney with Scott + Scott,

Attorneys at Law, LLP. She may be reached at vburke@scott-scott.com.

By JamesL. Bikoff and VictoriaL. Burke

Best Practices for Filing an Intent-to-Use Trademark

Application