In filing to register a trademark on an “intent-to-use” basis, the applicant must verify that it has a good faith “bona fide intention to use the mark in commerce.” 15 U.S.C. § 1051(b). Assuming there is nothing on the face of the application that calls the presence of such bona fide intent into question (e.g., conflicting statements, unreasonably broad identification of goods/services, etc.), the USPTO generally does not challenge the intent in connection with the processing of the application.
But if the application is opposed, the opposer may challenge whether the applicant actually satisfies the requirements for such bona fide intent. While the burden to prove up the intent to use is generally considered to be low, it does require evidence that directly supports such intent. At that point (or in the rare instances where the USPTO challenges the intent during the prosecution of the application), the applicant will need to provide documentary evidence that supports a firm and demonstrable plan to use the mark, and circumstantial evidence that the applicant is able to offer such goods or services without evidence tying such abilities to plans to do so using the mark will not be sufficient. See, e.g., Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001 (TTAB 2015).
As such, before filing an intent-to-use application, applicants should possess clear documentary evidence of their intent to use the mark in commerce in connection with the goods and/or services identified in the application. Such evidence might include various types of documents so long as they reference or otherwise bear the mark, including but not limited to:
- business plans or marketing strategy documents;
- timelines, roadmaps, or other internal memos;
- email and/or text communications concerning launch timing or product development;
- product designs, packaging, or labeling;
- mock-ups or prototypes.
While the applicant's intent to use an applied-for mark is unlikely to be challenged, the applicant should be prepared to prove up such intent, or risk losing the rights it seeks to protect.
the company didn't show it actually planned to use the mark for its intended purpose.
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