Federal trademark law allows the filing of an application for registration before the applicant has begun using the mark. These intent-to-use applications require that the applicant have a “a bona fide intention” to use the trademark in commerce. Federal courts have held that the lack of a bona fide intent is a proper statutory grounds on which another party may challenge a trademark application.
What is a bona fide intent? The Federal Circuit Court has explained “that the applicant’s intent must be demonstrable and more than a mere subjective belief.”
The applicant can demonstrate that it has a bona fide intent to use the mark by doing one or more of the following:
- conducting a trademark availability search;
- preparing graphic designs or labeling for a product;
- preparing business plans or market research;
- engaging in correspondence concerning plans to use the mark;
- test marketing the proposed mark;
- applying for necessary regulatory permits;
- obtaining a domain name for the mark, or setting up a website that displays the proposed mark;
- contacting persons or firms about helping to develop a business for the mark;
- attempts to find licensees, both in and outside the U.S.;
- obtaining commercial premises where the services will be performed.