Archived
updates for Thursday, July 09, 2009
Archived
updates for Wednesday, July 08, 2009
Evidence of Intent to Use Before the US Trademark Office
According to Edelman,"registration applicants should be very careful about including too many products or services in their intent-to-use based applications, and should maintain some minimal level of contemporaneous documentation and provable business rationale for the products or services listed in the application."
The affirmative activities that have been deemed indicative of the presence of a bona fide intent to use a trademark in commerce include:
- conducting a trademark availability search
- performing preparatory graphic design work or labeling on sales material for a product;
- using a mark in international jurisdictions
- using a mark in test marketing
- testimony regarding informal, unwritten business plans or market research
- obtaining necessary regulatory permits
- obtaining a correlative domain name for the mark or setting up a website
- making contacts with individuals who might help develop a business;
- correspondence mentioning the planned use of the mark
- attempts to find licensees, including ones outside of the U.S.
- obtaining commercial space in which to perform the services
The factual circumstances that have been deemed indicative of a lack of a bona fide intent to use include:
· an unrealistically broad listing of goods and services;
- a defensive intent to prevent others from using the mark;
- the filing of numerous intent-to-use applications without ever using them or subsequently abandoning them;
- the absence of any steps or planning to use the mark;
- lack of industry-relevant experience;
- misrepresentation of goods or services in order to reserve a mark
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