Search the Archives           Subscribe           About this News Service           Reader Comments

Archived updates for Wednesday, July 08, 2009

Evidence of Intent to Use Before the US Trademark Office

The latest issue of The Trademark Reporter includes Sandra Edelman's timely and informative article on bona fide intent, entitled "Proving Your Bona Fides - Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act," 99 Trademark Reporter 763 (May-June 2009).
According to the TTABlog, the U.S. Trademark Trial and Appeal Board's recent decision in Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) [precedential], brought the bona fide intent issue to the forefront for many trademark practitioners. There the Board sustained Honda's opposition to Herr Winkelmann's Section 44(e) application to register the mark V.I.C. for vehicles, ruling on summary judgment that Winkelmann had failed to establish the requisite bona fide intent to use his mark in the USA.

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

    (9)comment(s)     translate     More Updates     Send    


Blogger 123 123 said...

Nice story as for me. It would be great to read something more concerning this topic.
By the way look at the design I've made myself Young escorts

November 23, 2009 7:35 AM  
Blogger LAN said...

puma mens shoes
puma shoes
puma speed
nike shoes
nike air
nike air shoes
nike air max 90
nike air max 95
nike air max tn
nike air rift
nike shox r4
nike air max 360
nike shox nz
puma cat
air max trainers
mens nike air max
sports shoes
nike air rifts
nike air rift trainer
nike air
nike shoes air max
nike shoes shox
air shoes
Lucyliu IS Lucyliu
nike shoe cart
puma future
cheap puma
nike rift
jeans shop
diesel jeans
levis jeans
nike rift shoes
cheap nike air rifts
bape shoes

January 06, 2010 9:53 PM  
Blogger web hosting company said...

Excellent Blog. I really want to admire the quality of this post. I like the way of your presenting ideas, views and valuable content.
web hosting company

February 24, 2012 4:52 AM  
Anonymous dissertations said...

This post is quite confusing that might lead to your readers to ignore your future post about this topic. You can just use simple sentences to describe everything here.

November 25, 2013 3:42 AM  
Anonymous y9 said...

How far that little candle throws his beams! So shines a good deed in a weary world.

March 05, 2015 12:10 PM  
Anonymous Gambar Baju Terbaru 2015 said...

I was very encouraged to find this site. I would like to thanks for posting good post. I definitely enjoyed every bit of it and I have your blog bookmarked on my to read new stuff you post.

March 25, 2015 4:59 AM  
Anonymous Aksesoris mobil said...

Thanks for the sharing.
Please visit:
Cotton Bud
Toko Bunga

April 29, 2015 5:14 AM  
Anonymous melbourne web developer said...

Nice blog and good information instead!

April 29, 2015 9:39 PM  
Anonymous friv4school said...

Great! Thanks for sharing the information. That is very helpful for increasing my knowledge in this field.
pacman |happy wheels |my little pony games | unblocked games
friv4 kizi 4| unblockedgames

May 20, 2015 5:02 AM  

Post a Comment

<< Home