While many countries issue trademark registrations with a broad description of goods and services, and without evidence of use of the mark on any of the identified goods and services, to obtain a trademark registration in the United States, an applicant must ultimately provide evidence of use of the trademark in association with the goods and services identified in the applicant’s trademark application.
Although the United States Patent and Trademark Office (USPTO) requires that trademark applicants provide evidence of use of the mark on the goods and services identified in the application, the USPTO allows applicants to file a trademark application based either on actual and current use in interstate commerce, or upon a declaration that the applicant has a bona fide intent to use the trademark in interstate commerce in association with the identified goods and services. This latter type of application is known as an intent-to-use (ITU) application.
Because an ITU application is not based on use of a mark, applicants tend to include broad descriptions of goods and services in the initial filing. While doing so is not improper per se, it is important for applicants to remember that they must actually have a bona fide intent to use the mark on the identified goods and services at the time of filing.
While the USPTO may not typically question an applicant’s declared intent to use a mark with specified goods and services, third parties may not be so willing to believe the applicant’s declaration of a bona fide intent to use the mark in association with the listed goods or services. Indeed, a recent opinion from the Trademark Trial and Appeal Board (TTAB) demonstrates that this declaration, alone, may not be sufficient to overcome a challenge from a third party that the applicant lacked a bona fide intent to use the mark on the goods and services at the time of filing. In Lincoln National Corp v. Anderson, 100 USPQ2d 1271 (TTAB 2014), the TTAB sustained two oppositions to register the mark FUTURE, finding that the applicant lacked a bona fide intent to use the mark for specific services.
In this case, applicant Kent G. Anderson, a colorful trademark applicant, filed two ITU applications to register the mark “FUTURE.” Between the applications, Mr. Anderson listed goods and services in 19 different classes for literally hundreds of varying and somewhat unrelated goods and services, including, for example, insurance agency brokerages, electronic credit card transactions, leasing shopping mall space, and for goods ranging from candy to electronic consumer products to shoes. An opposition against each of Mr. Anderson’s applications was filed by the plaintiff, Lincoln National, collectively challenging his Class 35 services, for in part, shopping malls, franchising, and data processing services, and the Class 36 services, which included banking, insurance and financial services. Lincoln National based its challenges on the claim that the applicant did not have a bona fide intent to use the mark on the services in these classes at the time of filing the applications.
Trademark Act Section 1(b)(1) (“Section 1(b)”) provides, in pertinent part, that “[a] person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register….” In its discussion, the Board reiterated the standard for bona fide intention to use a mark, namely, “the determination of whether an applicant has a bona fide intention to use the mark in commerce is to be a fair, objective determination based upon all of the circumstances.” The Board then noted that the requirement that an applicant have a bona fide intent to use the mark must be read in conjunction with the definition of ‘use in commerce’, wherein ‘use in commerce’ is defined as use “in the ordinary course of trade, and not made merely to reserve a right in a mark.”
In evaluating Mr. Anderson’s intent to use the mark with respect to the challenged services, the TTAB noted that while the applicant had “idealistic hopes for forming a futuristic company,” had created a website that described his plans for the future, and had produced letters he had written to a variety of companies, including Ferrari, Proctor & Gamble, and Kellogg’s, outlining his visions for the future, these actions alone were insufficient to demonstrate intent to use the mark in connection with the described services. For example, none of the letters actually identified any of the services, and each were merely discussions about general ideas and hopes for a FUTURE project. The Board noted that Mr. Anderson was a sole proprietor without any knowledge of many of the areas included in his trademark applications, and specifically admitted in depositions that he lacked the funding, connections, know how, and even the desire to undertake business ventures associated with the challenged services identified in the trademark applications.
As a result of its findings, the TTAB found that the applicant failed to demonstrate a bona fide intent to use the “FUTURE” mark, sustaining oppositions to register the mark for the challenged services, stating that the applications were void ab initio as to Classes 35 and 361. In other words, the TTAB held that bona fide intent to use must be based on tangible evidence-capital, business plans, distribution contracts, concrete partnerships-and may not exist merely in the head of the applicant.
To support its conclusion, the Board looked to the legislative history of Section 1(b), 15 U.S.C. Section 1051(b) et seq., and noted that included in the objective circumstances which may cast doubt or even disprove the bona fide nature of the intent was “an excessive number of intent to use applications in relation to the number of products that the applicant…[was actually] likely to introduce under the applied for marks during the pendency of the applications.” Accordingly, the Board concluded that Mr. Anderson, “in filing the application, was merely attempting to reserve a general right in the [FUTURE] mark for potential use on some undetermined goods or services at some indefinite time in the future.”
This case is a reminder that, although the Trademark Office allows a liberal filing of goods and services based upon the intent to use a mark, that intent must be demonstrable, if challenged. Thus, as a practical matter, although it is acceptable to list many unrelated and disparate goods and services in an ITU application, it might be more prudent to limit the goods and services to those that are reasonably likely to be transformed from merely an intent to use, to actual use in commerce.
If you have questions about filing a trademark application, you need an experienced trademark attorney. Anna Vradenburgh
is a well-respected, business-minded expert in trademark issues with extensive experience prosecuting domestic and foreign trademarks. In addition to her prosecution practice, Anna also assists clients in the selection and use of trademarks and represents clients in trademark opposition matters, domain name dispute matters, and before the federal Trademark Trial and Appeals Board. Anna can also assist your company in licensing maters, including drafting and negotiation of trademark licensing agreements. For more information visit the Eclipse Law Group website
, or contact Anna directly at (818) 488-8146.
1This decision did not affect any of the remaining goods and services. Thus, the entire applications were not void ab initio, only the applications as to Classes 35 and 36.