“Empire Records” (1995), A conversation between Ethan Embry (“Mark”) and Rory Cochrane (“Lucas”):

Mark: Oh! I’ve decided I’m going to start a band.

Lucas:  Really?  [Leaning in], the first thing you need, is a name.  Then you’ll know what kind of band you’ve got.

Mark: Yeah. I know.  I know.  I was kinda thinking about, umm, “Marc”.  What do you think of that?

Lucas:  Is that with a “C” or with a “K”?

Mark: Well, my name is with [checking his nametag], a “K”, so I was thinking maybe my band could be with a “C”.  So that way, its kinda like that psychedelic, you know, trip thing.

So Mark, in an effort to know what type of band he has, goes to the Trademark Electronic Search System and conducts a search of *Ma{“r”1:2}{“ckqxh”1:2}*[bi,ti] in International Classes 009 (downloadable music sound recordings) and 041 (Live performances by a musical group).  He believes the results to be promising and decides to move forward with his trademark application.

Acknowledging that he is not yet using the mark for his band, but that he intends to, he files a trademark application for “MARC” in standard characters for International Class 009 and 041, provides the declaration regarding his having a bona fide intent to use the mark in interstate commerce, verifies his application, and pays $550– which is quite a bounty when working at a record store on the verge of collapse.

Were someone to challenge his bona fide intent to use, it may go something like this:

Opposing Counsel:  Did you have a bona fide intent to use?

Mark: Yes.

Opposing Counsel:  How can you support that?

Mark:  I discussed the plan to start a band with my colleague, Lucas.  I then spent several hours searching the mark in TESS to check its availability.  Finally, I invested $550 in seeking to protect and secure the name.

Opposing Counsel:  Anything else?

Mark:  No.  I have limited means and did not wish to make further investments until I knew I had secured the rights to the name.  That said, isn’t the simple fact that I paid money to apply for the trademark, seemingly without any other potential benefit available to me, evidence enough that I intend to use the mark if granted?  Is anyone out there just filing trademark applications as a hobby?

The surprising answer is—that may not be enough.

As a general practice, the standard for filing a trademark application based on a Section 1(b) intent to use basis is quite low.  Specifically, the mere inclusion of a declaration supporting your intent to use a trademark or service mark in interstate commerce which the United States Congress may regulate is sufficient to satisfy the requirement to assert a Section 1(b) basis.  The Trademark Manual of Examining Procedure Section 1101 discusses intent to use applications and mandates that verified intent to use statements be taken at face value.  Specifically, the section states, “The USPTO will not evaluate the good faith of an applicant in the ex parte examination of applications.  Generally, the applicant’s sworn statement of a bona fide intention to use the mark in commerce will be sufficient evidence of good faith in the ex parte context.  Consideration of issues related to good faith may arise in an inter partes proceeding, but the USPTO will not make an inquiry in an ex parte proceeding unless evidence of record clearly indicates that the applicant does not have a bona fide intention to use the mark in commerce. See, e.g., M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015).”

As it turns out, oppositions and cancellations can and have been won based on a showing of no actual intent to use.

For example, the case cited above, M.Z. Berger & Co. v. Swatch AG, involved an opposition filed against a watch manufacture seeking to register the mark “iWatch”.  787 F.3d 1368, 1375 (Fed. Cir. 2015).  The Trademark Trial and Appeal Board sustained the opposition, based on Opposer’s allegation that applicant lacked a bona fide intent to use the mark in interstate commerce at the time of filing.  Id. at 1371.  The case served as the Court of Appeals for the Federal Circuit’s first look at whether a lack of bona fide intent to use is a proper statutory grounds on which to challenge a trademark application and found in the affirmative. Id at 1375.  The important take-aways from this case are the following:

  • There is no statutory definition of the term “bona fide,” but the language is clear on is face that an applicant’s intent must be “under circumstances showing the good faith of such person.” The reference to “circumstances showing the good faith” strongly suggest that the applicant’s intent must be demonstrable and more than a mere subjective belief.
  • Whether an applicant had a “bona fide intent” to use the mark in commerce at the time of the application requires objective evidence of intent.
  • All though the evidentiary bar to support this intent is not high, Congress did not intend the issue to be resolved simply by an officer of the applicant later testifying, “Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some point in the future.”

Id.; see also Lane Ltd. v. Jackson Int’l Trading Co., 33 U.S.P.Q.2d (BNA) 1351, 1355–56 (TTAB 1994), 33 U.S.P.Q.2d at 1355; 3 McCarthy on Trademarks § 19.14, at 19.48.

In Lane, the TTAB provided “several specific examples of objective circumstances which, if proven, ‘may cast doubt on the bona fide nature of the intent [to use a trademark or service mark] or even disprove it entirely.’” 33 U.S.P.Q.2d 1351 (internal citations omitted.)

  • Applicant may have filed numerous intent-to-use applications to register the same mark for many more new products than are contemplated,
  • numerous intent-to-use applications for a variety of desirable trademarks intended to be used on [a] single new product,
  • numerous intent-to-use applications to register marks consisting of or incorporating descriptive terms relating to a contemplated new product,
  • numerous intent-to-use applications to replace applications which have lapsed because no timely declaration of use has been filed,
  • an excessive number of intent-to-use applications to register marks which ultimately were not actually used,
  • an excessive number of intent-to-use applications in relation to the number of products the applicant is likely to introduce under the applied-for marks during the pendency of the applications, or
  • applications unreasonably lacking in specificity in describing the proposed goods.
  • Other circumstances, which may also indicate the absence of genuine bona fide intent to actually use the mark.

Id.

Not to be outdone at list-making, in Kelly Servs., Inc. v. Creative Harbor, LLC,the Sixth Circuit Court of Appeals described the sort of evidence that may be persuasive for a bona fide showing. See 846 F.3d 857, 864–65 (6th Cir. 2017).  Citing “one prominent practitioner” who compiled a list of “affirmative activities that have been deemed indicative of the presence of a bona fide intent to use,” Kelly sets forth the sorts of actions a court or the TTAB may look for:

  • conducting a trademark availability search;
  • performing preparatory graphic design work or labeling on sales [or marketing] material for a product;
  • 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.; [and]
  • obtaining commercial space in which to perform the services.

Id. (citing Sandra Edelman, Proving Your Bona Fides—Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act, 99 Trademark Rptr. 763, 781–82 (2009) (footnotes omitted) (emphasis in original)).

Mark’s performance of a trademark search and his discussions with Lucas are some evidence, but they may not be enough.  Were Mark able to provide evidence demonstrating, say, his designing of a logo to accompany his band name,  his shopping for equipment– like guitars or sound recording devices, his rental of practice space, written correspondence with Berko about joining the band, or communications with Eddie regarding  refreshments at practices, each of these would evince his intent to use the mark.  While it is unclear how much evidence is necessary, a healthy suggestion is “more.”

Though the standard of evidence is low, the system’s goal is to make sure individuals are not simply sitting on a name to keep others from using it.  Use is the cornerstone of our trademark system.  Keep records to support your intent to use a trademark, as you never know when it may be necessary.  The mere fact that your trademark examining attorney doesn’t ask for it during examination does not mean your intent to use will never be challenged.

If you’d like help clearing your band’s name or merging your independent store with a national brand, the attorneys of Brackett & Ellis, P.C. can help.