“Intent To Use” Must Not Be Subjective

Under U.S. trademark law, an applicant may file to seek a trademark registration on an “intent to use” basis, meaning that He or she actually intends to use the mark in connection with particular goods or services in commerce. This is a relatively new ( o.k., not that new, 1989), feature to U.S. Trademark law which allows applications to be filed before a mark is actually in use.

Courts and the Trademark Trial and Appeal Board have examined what is meant by intent to use and the results do not favor applicants who file an application as a “placeholder” in order to gain priority in a mark if they ultimately commence use and registration. For example, in In Bobosky v. Adidas AG (Decided December 29, 2011), the District of Oregon found  that the applicant lacked the legally required intent when he filed ITU applications to register WE NOT ME in connection with a wide variety of clothing products.

According to the Court,

 “[a]n applicant’s subjective testimony about his state of mind cannot demonstrate that he possessed a bona fide intent to use the mark. Typically, an applicant demonstrates his bona fide intent to use by producing ‘a written plan of action’ for a new product or service. If there is an absence of documentary evidence showing the applicant’s intent to use the mark, the burden shifts to the applicant to adequately explain that lack of documentary evidence. By itself, the absence of contemporaneous documents indicating an intent to use is sufficient to prove an applicant’s lack of bona fide intent.”

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