Intent-to-Use: Making sure its bona fide and that you can prove it

The recent SmithKline Beecham Corp. v. Omnisource DDS, LLC, 97 USPQ2d 1300 (TTAB 2010), case reminds us that applicants who file trademark applications based on a bona fide intent to use a mark in commerce need to have supporting documentation and/or objective evidence in the form of real life facts and actions to demonstrate that they possessed the requisite bona fide intention to use the mark at the time the application was filed.  Without such evidence, a third party may ultimately be able to prevent the US Patent and Trademark Office (“USPTO”) from registering the applied for mark.

While the Trademark Law Revision Act of 1988 introduced a system that allows for trademark applications to be filed in the United States prior to the time that a mark is actually in use by the applicant, provided that the applicant has a bona fide intention to use the applied for trademark in commerce with the associated goods and/or services, it did not provide a definition that specifies the types of actions or activities that are sufficient to demonstrate the existence of this good faith bona fide intention.  As such, applicants and legal practitioners are reliant upon case law to clarify what type of evidence would, or, more often, would not be sufficient to prove that an applicant had the requisite bona fide intent at the time the application was filed.

In the SmithKline case, not only did the Applicant fail to produce documents relating to the selection of the mark, but it also failed to provide any evidence regarding manufacturing efforts, licensing efforts, test marketing, preparation of marketing plans or business plans and/or other actions to develop the product to be marketed under the applied for mark.  While the principal of the applicant entity did own patents for the goods described in the application and while there were minutes from annual meetings that mentioned development and research of products and/or protection of trademarks, the Trademark Trial and Appeal Board (“TTAB”) did not find such evidence sufficient.  With respect to the patents, the TTAB stated that the patents indicate only that the named inventors sought to protect the device described by the patents, not that the applicant possessed a bona fide intent to use the applied for mark on the specified goods.  As for the content of the minutes, those were seen as vague and speculative since they did not specifically mention the type of goods being developed or the exact mark.

Repeatedly, we are reminded that Applicants must have clear evidence relating to the intent to use the applied for mark in association with the goods/services identified in the application.   While the USPTO is not going to challenge or investigate the veracity of an applicant’s claimed bona fide intent to use a mark on specified goods/services on its own accord, more and more often, third parties are seeking to challenge an Applicant’s right to register a mark based on its lack of a bona fide intention at the time the application was filed.

As such, it is important for clients to not only keep records regarding the selection and development of a mark, including searches and investigations conducted prior to the time the application was filed, but also to keep records regarding knowledge of the industry and development of the particular product(s)/ services(s) associated with their trademark applications.  This is particularly true if the client/applicant is entering into an industry for the first time or expanding its current business into new, arguably unrelated, arenas.

Keep in mind, these requirements are not just for US applicants.  The TTAB has made it clear that foreign applicants also need facts that establish the existence, at the time the application was filed, of an ability and willingness to use the applied for mark to identify the goods/services in the US.  Registration and use of the mark in one or more foreign countries and filing of applications in other countries as well as the US will not be enough to show that the foreign applicant had the requisite bona fide intent to use the mark in the US.

Ellen Rubel

About Ellen Rubel

Ellen Rubel is a former United States Patent and Trademark Office attorney once honored as Trademark Examiner of the Year, Ellen Rubel brings particular experience in trademark issues to her intellectual property practice. She focuses her practice in the areas of domestic and international trademark development, maintenance, prosecution, and protection. She also regularly conducts intellectual property due diligence in the context of mergers, acquisitions, and credit facilities. In addition, Ms. Rubel assists and advises in a variety of intellectual property contentious matters and with intellectual property licensing and transactional work.


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