Intent-to-use applications to register a trademark

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.