There has been a lot of talk lately about what the true meaning of “bona fide intent” means under the Lanham Act, given the plethora of recent applications filed by trademark squatters in an effort to profit from the Washington Redskins’ name change. It is against the U.S. trademark rules of practice and policy to file trademark applications merely to reserve a trademark or to try to warehouse trademarks for future use. The applicant must have a bona fide intent to use the trademark in interstate commerce unless the mark is not already in use in commerce. (To learn more about use in commerce, read our blog post here).
How do you establish bona fide intent?
Can’t a trademark owner just claim that it had an intent to use the mark, if challenged? No! The Board has been very clear that bona fide intent to use is an objective test. Some of the things a trademark owner can do (and you should be sure to counsel them to keep evidence of at least a few of these in case the intent is ever challenged) prior to filing a new intent to use application:
- document the selection, adoption and use of the mark, including all trademark searches
- prepare the business and/or marketing plan, including the financial forecast for a number of years
- consider or identify possible purchasers of the products/services
- plan or create marketing, advertising or promotional materials, including the website for your product/services
- consider what raw materials will be needed to manufacture goods
- produce and preserve product prototypes
- prepare schematics or instructional manuals
- plan or create labels, tags, or packaging for your products
- consider where and how your goods will be manufactured and by whom
- consider when your goods and services will become available for purchase
- purchase liability insurance
- create a budget for the goods/services involving the mark
The applicant itself can prepare one or more of these items or work with third parties to prepare them.
Want to Learn More?
If you would like to learn more about the trademark application process, including the basics of counseling clients and elevating your trademark practice so you can have more confidence while growing your trademark practice, join our Trademarkabilities® Masterclass. You learn more about our courses here to enroll or reach out to us for more information. Or, you can join our mailing list, and download our free e-guide “5 Tips for Trademark Attorney Success.”
Stacey C. Kalamaras is the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. Stacey started Trademarkabilities to share her passion teaching the law with the next generation of lawyers and help them become practice ready lawyers. Contact us at: hello@trademarkabilities.com.
Stacey is also a seasoned trademark attorney and currently works in-house as Senior Counsel for a multi-national candy company. She previously owned her own solo trademark practice, which she scaled and sold. She has been recognized by her peers for her outstanding knowledge and service in intellectual property law.