There are numerous potential landmines awaiting those seeking to secure federal registration of their valuable company trademarks. The need to beware cannot be overstated. A trademark owner does not want to find out after spending the time and money to secure a federal registration that the protection received has been rendered void. While the minefield can be vast, one helpful thing to bear in mind is that evidence is key. Keep a file.
When one seeks to register a trademark in the United States, the law allows the application to be based on either actual use of the trademark in interstate commerce or on a “bona fide intention” to use the mark in such commerce. However, the law does not define “bona fide intention.” Therefore, the issue of “bona fide intention” or “intent to use” comes up quite frequently in litigation; both in court proceedings during infringement actions and in opposition and cancellation cases before the Trademark Trial and Appeal Board. Accordingly, when filing an ITU application, applicants should be prepared to prove their intent. Applicants should also maintain evidence showing use of their trademark in commerce in connection with all the goods and services listed in their application; not just some of them.
Recent case law has clarified that in ITU applications it is not enough to have a generalized intention to use the trademark in the indefinite future. An applicant should not attempt to simply reserve a general right in a trademark for potential use on some undetermined goods or services at some indefinite future period. The applicant should be able to demonstrate a plan to use the mark in commerce and actions toward executing that plan. If not, the applicant risks rejection of the application after months of prosecution, or even cancellation of the registration if the application makes it that far. Further, the applicant could lose priority for the trademark in a situation where another party begins actual use of the mark between when the application was filed and the date of the applicant’s first use in commerce.
Hopefully this bit of information will serve to better prepare you if you ever must enforce your trademark rights against infringers and to defend yourself against unmeritorious claims. Keeping your evidence file updated will likely put you far ahead of your opponents should litigation become necessary.
©2016 Albert F. Davis, Esq.
This law update is intended for general information purposes only. One should not consider the update legal advice or legal opinions relating to any specific facts or circumstances. An attorney-client relationship is not created by reading this update. Please feel free to contact A.F. DAVIS LAW for further information.