Intent-to-Use

News & Analysis as of

Trademark Review | July 2015

Applicant’s Application for Concurrent Use Registration of DELMONICO’S is Denied Due to Likelihood of Confusion with Other Restaurants - The Trademark Trial and Appeal Board (TTAB) refused Southwestern Management’s...more

Web trademarks: It's not the words, it's the action

In the old days, you obtained nationwide priority for your trademark only through federal registration. But does the Internet now give you an easier path to nationwide priority, just by posting your mark on a nationally...more

Federal Circuit: Lack of Bona Fide Intent to Use at the Time of Filing Fatal to Trademark Application

In a recent ruling the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (TTAB) sustaining an opposition against a trademark application on the grounds that the applicant failed to prove that it...more

Filing a New ITU Trademark Application? Be Prepared to Prove Your Intent

Staking an early claim to a brand has inspired many hasty (and sometimes ill-advised) trademark applications. For example, trademark applications representing political rallying cries and pop culture slogans such as JE SUIS...more

Is Brewer’s BOSTON 2024 Ahead of Its Time?

Boston Beer Corporation, makers of Samuel Adams beer, received approval for its intent-to-use trademark application for the word mark BOSTON 2024 for “beer,” which generated some news buzz in light of the city’s bid for the...more

Offering of Services Alone Insufficient Basis for § 1(a) Trademark Application - David Couture v. Playdom, Inc.

Addressing for the first time whether the offering of a service was sufficient “use in commerce” under the Lanham Act, the U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB)...more

Celebrity Trademark Watch: Can Taylor Swift Shake Off Accusations of Trademark Greed?

Had enough of Taylor Swift yet? For those of you who hate to love her, you might consider Swiftamine, because she is not going anywhere anytime soon. If anything, her media foot print continues to grow. And while one...more

Use It or Lose It: When Can a Trademark Registered Under Section 44(e) or 66(a) Be Deemed “Abandoned” in the US?

Unlike most countries, US trademark law generally requires that a mark be in use before it can be protected. The US recognizes common law rights in unregistered marks if they have been adopted in good faith and are in actual...more

Good(s) Intentions – What's Enough to Establish Bona Fide Intent to Use?

When used effectively, brand and merchandise licensing can increase the value of a brand by extending it into new, relevant product categories and by further monetizing brand equity. And when seeking to protect a brand in...more

MarkIt to Market - November 2014

The November issue of Sterne Kessler's MarkIt to MarketTM newsletter includes a case study on bona fide intent to use, a resolution to Anthropologie's opposition to the mark, and an updated list of the Sunrise periods...more

Trademark Trial and Appeal Board Sustains Opposition on the Basis of Fraud

Nationstar Mortgage LLC v. Mujahid Ahmad - The United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB or Board) sustained an opposition on the basis of fraud, finding that Ahmad’s...more

Intellectual Property and Technology News - Issue 23, Q3 2014

In This Issue: - Substitution Allowed? State Biosimilar Laws Are Evolving - Patent Wars: Can The Energy Industry Avoid Them? - Surviving A Trademark Opposition Challenge: Do You Have A True...more

The Katten Kattwalk | Issue 05

In this issue: - The Early Bird Gets the Trademark: Don’t Delay Filing Intent-to-Use Applications - Color Wars: Narrowing Color Claims in Trademark Rights - It’s Good to Be Famous: TTAB Expands...more

Intent to Lose? Be Wary of Pitfalls Involving Intent-to-Use Trademark Applications.

Merger and Acquisitions often involve the acquisition and/or assignment of trademarks. Companies acquiring trademarks must beware of potential problems lurking with intent-to-use (ITU) trademark applications (or applications...more

STONE LION CAPITAL Likely to Cause Consumer Confusion with LION and LION CAPITAL

Stone Lion Capital Partners, L.P. v. Lion Capital LLP - The U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s decisions sustaining an opposition to registration of the mark...more

Intent To Use – It’s Not The Thought That Counts

Bona fide intent, the sine qua non of non-use trademark applications, was given new meaning by the TTAB in a decision released unpublished February 21, 2014 but redesignated as precedent on March 26, 2014, thus placing at...more

Intent-to-Use Trademark Applications and Security Agreements

In financing transactions, such as loans or securitizations, the lender who provides the financing will typically take a security interest over the assets pledged as collateral against the borrower's compliance with its...more

How Much “Intent” is Enough to Support an “Intent to Use” Trademark Application?

For many years now, the US Trademark Office has accepted trademark applications based upon a “bona fide intent to use” the applied-for mark on all the goods and/or to provide all of the services listed in the application at...more

Lack of Evidence of Intent to Use Dooms an “ITU” Trademark Application

The Trademark Trial and Appeal Board (TTAB) recently granted summary judgment sustaining an opposition against an application based on intent-to-use (“ITU”) on the sole ground that the applicant had no tangible proof of any...more

What Does the Suffix Say?

Ylvis, the Norwegian music/comedy duo, recently revealed the secret of the fox to more than a hundred and twenty-three million viewers on YouTube (as of this posting), answering the vexing question: What does the fox say?...more

Trademark Review - Volume 3 | Issue 9 September 2013

In This Issue: • Beware of The “Simple” Assignment of Intent to Use Applications to an Affiliate • TTAB Reverses the Refusal to Register BITES OF BOSTON • Updates on Registration of New Generic Top-Level...more

Intra-Corporate Trademark Transfers: Beware of the Intent-To-Use Trap

In the course of a corporate restructuring or in the management and reorganization of a company’s IP assets, intra-corporate trademark assignments are not uncommon....more

Oops! Assignment Of Intent-To-Use Trademark Applications: Easy But Not Simple

The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications. In a recently issued precedential opinion, the Trademark Trial and Appeal Board has held, once again, that Section...more

TTAB Cancels Registration Due to Improper Assignment of Intent-to-Use Application

In a precedential decision issued last week, the Trademark Trial and Appeal Board (TTAB) cancelled a registration because it was based on an intent-to-use (ITU) application that had been the subject of an intra-corporate...more

Foreign Marks Vulnerable in US

“Cancellable? Unenforceable? Why?” This is likely to be the reaction of most foreign owners of U.S. trademark applications and registrations, and of many of their U.S. counsel, when challenged by claims that the owner lacked...more

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