U.S. trademark law permits the filing of a trademark application based either upon an actual present use of the trademark in commerce or upon a good faith intent to use the proposed mark in commerce in the future. But too often as to the latter, these "Intent To Use" applicants do not possess the necessary bona fide intent.
In a case of first impression the Federal Circuit recently addressed the meaning of bona fide intent. The court ruled that an Intent To Use applicant must possess an objectively established intent to use the mark in commerce as of the date of its application. A generalized intent to reserve the trademark will not suffice. A subjective intent to use the mark some day is not acceptable. The necessary intent to use must be objectively "demonstrable and more than a mere subjective belief."
An Intent To Use applicant must be in possession of documents prior to the date of the application showing a good faith and firm intention to develop an in-commerce use of the proposed trademark. Alternatively. the applicant must provide good faith testimony demonstrating the firm action undertaken prior to the filing to develop an in-commerce use of the proposed trademark. Documents developed merely to assist in the prosecution of the application are insufficient to establish bona fide intent. And conflicting testimony from the applicant's employees creating confusion surrounding steps taken to use the mark will not support a bona fide intent.
In the recent Federal Circuit case, the Intent To Use applicant, M.Z. Berger & Co., manufactured, imported and sold watches, clocks and personal care products. It filed an Intent To Use application for the proposed trademark iWatch for watches, clocks and associated goods (e.g., watch bands, etc.). Swatch AG filed an opposition, claiming that the proposed iWatch mark was confusingly similar to its mark SWATCH, and that Berger lacked the necessary bona fide intent to use its proposed iWatch mark.
In attempting to establish the existence of its bona fide intent to use iWatch, Berger offered both testimonial evidence of its staff and documentary evidence from its files. But the staff testimony was conflicting, and the staff "failed to tell a consistent story about the company's intent at the time the application was filed."
The documentary evidence was of three types: (1) a trademark search, (2) internal company e-mails relating to the application, and (3) internal company e-mails relating to "images of watches and a clock bearing the iWatch mark." These documents, however, only related to the trademark application and did not establish an objective business intent to use the mark in commerce. That is, the trademark search was not undertaken as a step to begin use of the mark, but rather as a step to make the trademark filing. The internal documents relating to images of the mark and watches were prepared to support the trademark application and not for commercial purposes.
The lesson learned from this recent case is that, notwithstanding the relatively simple process of applying for trademark protection in the U.S. based on a future intent to use, it is necessary at the time the application is filed for the applicant to have an objectively demonstrable intent to use the mark in commerce. Necessary proof of bona fide intent requires that the applicant possess documents and consistent testimony establishing plans to undertake actual use, and not merely documents to support a trademark application.