When filing a trademark application with the United States Patent and Trademark Office (USPTO) under the “intent-to-use” (ITU) basis, you’re stating that you plan to use the mark in commerce in the near future. While you don’t need to show actual use at the time of filing, the USPTO and courts require that you demonstrate a bona fide intent to use the mark for the goods or services listed.
Proving a bona fide intent to use involves showing that your intent is genuine and supported by concrete plans. Here’s what you need to know about this requirement, how to document your intent, and how to avoid potential pitfalls.
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What Is a Bona Fide Intent to Use?
A bona fide intent to use means you have a real, good-faith intention to use the trademark in commerce and not merely a speculative or theoretical interest in reserving a name. This prevents businesses from “squatting” on trademarks they don’t actually plan to use.
Example of Bona Fide Intent:
• A company developing a new line of sportswear files an ITU application for the trademark “FlexGear” while preparing its product designs and marketing materials.
Example of Lack of Intent:
• An individual files an ITU application for “FlexGear” across unrelated industries with no specific plans to use the mark, simply to block others from using it.
What Evidence Can Prove Bona Fide Intent?
While the USPTO doesn’t require evidence of intent at the time of filing, your application can be challenged if another party alleges you didn’t have a bona fide intent. To protect your trademark, keep detailed records that demonstrate your plans.
Examples of Acceptable Evidence:
1. Business Plans
• Written plans detailing how and when the mark will be used in commerce.
• Product descriptions, launch timelines, and marketing strategies.
2. Product or Service Development
• Prototypes, designs, or mockups of products bearing the mark.
• Research and development records related to the goods or services.
3. Marketing and Advertising Materials
• Drafts of advertisements, logos, or website content featuring the trademark.
• Plans for social media campaigns or promotional events.
4. Licensing or Manufacturing Agreements
• Contracts with manufacturers, suppliers, or distributors for products bearing the mark.
• Licensing agreements for the use of the mark in commerce.
5. Regulatory Approvals
• Applications or approvals from relevant regulatory agencies (e.g., FDA filings for pharmaceuticals).
6. Domain Names and Website Development
• Registration of a domain name incorporating the trademark.
• Website mockups or online store plans using the mark.
7. Correspondence Related to the Mark
• Emails or letters discussing the mark with business partners, legal counsel, or consultants.
What Won’t Prove Bona Fide Intent?
Simply filing an ITU application without concrete plans or action to support your intent is not sufficient. The following are examples of weak or insufficient evidence:
• Filing an ITU application with no business plan or evidence of development.
• Owning the domain name for a mark but taking no further steps to use it.
• A vague desire to “one day” use the mark without specific plans.
How Long Do I Have to Prove Use in Commerce?
After your ITU application is approved and you receive a Notice of Allowance, you have six months to file a Statement of Use showing actual use in commerce. If you’re not ready, you can request up to five six-month extensions (for a fee), giving you a total of three years from the Notice of Allowance to provide proof of use.
Risks of Filing Without a Bona Fide Intent
If another party challenges your application or registration, they may request evidence of your bona fide intent. If you can’t provide sufficient proof, your application could be canceled or your trademark rights revoked.
Common Scenarios Where Intent Is Challenged:
• Opposition Proceedings: A third party opposes your application, claiming you lack intent to use the mark.
• Cancellation Actions: After registration, someone challenges the validity of your trademark on the same grounds.
Example:
If you filed an ITU application for a clothing brand but have no records of product development, business plans, or marketing materials, a competitor may challenge your trademark and potentially succeed in canceling it.
Best Practices to Demonstrate Bona Fide Intent
1. Document Every Step
Keep detailed records of your plans, communications, and development activities related to the trademark.
2. Take Action Early
Begin product development, marketing, or business planning soon after filing your ITU application. The longer you wait, the harder it may be to demonstrate intent.
3. Align Intent with the Goods or Services Listed
Ensure your plans correspond directly to the goods or services in your application. Overly broad filings may invite challenges.
4. Consult with an Attorney
A trademark attorney can help you draft a strong application, ensure your plans align with your filing, and advise on how to document your intent effectively.
Conclusion
Proving a bona fide intent to use a trademark requires more than a mere desire to secure a name. It involves showing genuine plans and actions to bring the mark to market. By documenting your intent through business plans, development efforts, and marketing preparations, you can strengthen your trademark application and protect it against potential challenges.
If you’re considering filing an ITU application or need help documenting your intent, consulting with a trademark attorney can provide valuable guidance. They can help you navigate the process, ensure your plans are well-supported, and set your trademark up for success.