The number of trademark applications has more than quadrupled in the last 25 years (82,426 in 1989 v. 336,275 in 2014), due in part to hasty political and pop culture trademark applications such as LEFT SHARK, JE SUIS CHARLIE, ICE BUCKET CHALLENGE, and OCCUPY WALL STREET.
A recent CAFC (Court of Appeals for the Federal Circuit) decision, M.Z. Berger & Co. v. Swatch AG cautions against hasty Intent-to-Use (ITU) applications. The court held that lack of proof of “bona fide intent” to use a mark can doom its application. The plaintiff applied for “IWATCH” for watches, clocks, and personal products. Swatch opposed the application claiming, among other things, lack of bona fide intent to use the mark in commerce.
The Board in turn refused registration, holding that “bona fide intent” must be demonstrated objectively (beyond the commonplace sworn statement of intent to use the mark). In this case, the CAFC applied the TTAB practice requiring documentary evidence that the intent is “form and not merely intent to reserve a right in the mark” upon request by an Examining Attorney or opposer. To avoid similar missteps, you can stick to the following guidelines:
– Follow standardized product development processes for each of your product lines and related trademarks in order to provide future ample documentation in your application.
– Gather documentation of the product and trademark development process to proffer in your application, as needed.
– Be sure to conduct ample trademark searches to see if your application could run into trouble.
– Be careful not to indicate an unrealistic number of goods and services in your application, as this could draw unnecessary attention and more areas for which you will need to demonstrate a bona fide intent.
– Be careful when filing for marks “just in case.”
– Use this principle to aggressively protect your own marks by opposing potentially infringing applications that do not provide documentary evidence of a bona fide intent to use their mark.