"It’s the thought that counts.” This common refrain may suffice in various social settings but it is simply not enough before the Trademark Trial and Appeal Board. The best of intentions will need to be supported by objective evidence when it comes to an applicant’s bona fide intent.
When filing an Intent to Use application, it is not necessary to furnish objective evidence of the applicant’s intent. Rather, the applicant makes a declaration that it has a bona fide intent to use the mark in US commerce on the goods and services identified in the application. However, if challenged by a third party, the applicant will need to provide the Board with objective evidence of the applicant’s subjective, bona fide, intent. Failure to corroborate the applicant’s subjective intent with objective evidence risks refusal of the application or cancellation of the registration.
In determining the sufficiency of evidence demonstrating bona fide intent, the Board’s focus is on the entirety of the circumstances as revealed by the evidence of record. Documents are perhaps the most common way of establishing this record. While not an exhaustive list, examples include written documents showing:
1) Business plans or steps to bring the products or services to market;
2) Promotional activities, including attendance at conferences, trade shows, etc.;
3) Planned or completed market studies or surveys;
4) Planned retail or wholesale prices;
5) Manufacturing activities, including samples or prototypes;
6) Steps to obtain required governmental approval or license; and
7) Offer to license the mark, even if the offer is not accepted.
For most clients, these types of documents are created in the normal course of business. Smaller companies or individuals may not keep such detailed records, but would benefit significantly from attending to such record-keeping in the event their trademark is challenged for lack of bona fide intent.
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