As the explosion in popularity of various social media outlets continues, new norms are increasingly clear: once-descriptive social media hashtags and Twitter handles are now valuable assets that we associate with specific parties. Businesses, in particular, should have social media account usernames and hashtags cleared before using them in marketing and advertising their goods or services. (more…)
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The U.S. Patent and Trademark Office has a new random audit procedure for trademarks aimed at removing deadwood from the Register. (more…)
The U.S. Supreme Court recently struck down as unconstitutional the ban on disparaging trademark registrations, but that doesn’t mean a dispensary can get a federal trademark registration. (more…)
Trademark owners applying for “intent to use” applications risk loss of trademark rights if the identification of goods services in the intent to use application is broader than the actual intended use of the mark.
Brand owners generally want to protect a potential trademark as broadly as possible. Often, this leads to specifying as many goods or services in their intent-to-use trademark applications as might possibly be covered by the planned mark. If no proof of bona fide intent can be marshaled, the registration is vulnerable to attack.
A recent case demonstrates that dreaming big in trademark applications is not to be encouraged. While Kelly Services v. Creative Harbor did not result in a punitive cancelation of the mark’s resulting registration, it nonetheless made it clear that goods and services with only potential plans for use with a mark will be cut out of the registration when challenged. See Kelly Services, Inc. v. Creative Harbor, LLC, No. 16-1200 (6th Cir. 2017).
Section 1(b) of the Lanham Act does not define “bona fide intent,” but the Federal Circuit in Kelly Services required that “the applicant’s intent must be demonstrable and more than a mere subjective belief.” That is, the applicant must show more than a mere intention to reserve a right in the mark. Particularly suspicious circumstances that cast doubt on the bona fides of the application include: (1) excessive numbers of intent-to-use applications in relation to the number of products the applicant is likely to introduce; (2) unreasonably vague descriptions of the proposed goods; (3) excessive numbers of intended products; and (4) excessive numbers of desirable trademarks intended for use on a single new product.
To demonstrate the presence of their bona fide intent to use a mark, however, brand owners can do a number of things. For example, the owner can: (1) conduct a trademark availability search on the mark; (2) develop marketing materials for the brand; or (3) produce correspondence or documents mentioning the planned use of the mark, the licensing of the brand, the regulatory approval of the branded line or the business development of the brand.
Such evidence shifts the burden of proof back to the challenger, who must then produce a preponderance of evidence to the contrary – a much more difficult task in light of demonstrated bona fide intent.
PRO TIP: Before filing a statement of use, compare the identification of goods and services in the trademark application to the goods and services currently offered under the brand, then tailor the identification to the goods and services in use under the mark.