U.S. trademark law allows an applicant to file a trademark application, before it has actually begun using a proposed mark, by stating in the application that it has a bona fide intent to use the mark. But, because having a bona fide intent to use the mark is a legal prerequisite for such an application, there is a risk that the United States Patent and Trademark Office (USPTO) could void the application if an opposer were to successfully challenge the intent as not being bona fide. The USPTO's Trademark Trial and Appeal Board (TTAB) recently held that an application for a logo design mark that contained the words IRISH POLO CLUB USA was void because the applicant did not have a bona fide intent to use the mark. The owner of the various POLO RALPH LAUREN marks challenged the IRISH POLO CLUB USA application and successfully argued that the trademark applicant could not prove it had a bona fide intent to use its proposed mark, because it could not provide any evidence demonstrating such intent (PRL USA Holdings, Inc. v. Young, Opposition No. 91206846 (TTAB 2013)).
The TTAB noted that the judgment of a bona fide intent is an objective determination, and that an opposer can successfully challenge an application by proving that the circumstances present at the time of the application filing did not demonstrate a bona fide intent.
Because the determination is an objective one, an applicant cannot demonstrate a bona fide intent simply by stating that it has such an intent--instead, it must provide documentary evidence of that intent.
What kind of documentary evidence can an applicant provide? The TTAB suggested three kinds: 1) business plans, 2) marketing or promotional activities, and 3) discussions with manufacturers or licensees. In addition, the TTAB noted that it commonly finds a lack of bona fide intent when applicants "lack the demonstrated capacity to produce the goods identified in the application."
Trademark applicants filing applications for marks they have not yet begun using should make specific efforts to demonstrate their bona fide intent to use the marks, and they should ensure that they preserve evidence of those efforts in case opposers challenge the validity of their applications. At the least, they should maintain files that contain basic business plans, background research, and records of communications with various parties who are involved in all the processes of using a mark--manufacturing contacts, advertising and promotional agencies, marketing research and business consultants, internal contacts, distributors, and customers.
On the flip side, an opposer of a trademark application based on a bona fide intent should consider attacking the application by alleging that, at the time of the application filing, the applicant did not have a bona fide intent to use the mark. And, the opposer should make sure that its discovery requests seek information regarding the applicant's intent to use the mark.
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