Branding Strategies, Priority of Trademark Rights, and Intent to Use applications!

In a recent trademark opinion, the parameters of intent to use applications were explored to determine priority of trademark rights.  Often advertising, branding and marketing strategies are designed and launched in advance of an upcoming product or service roll out. However, the time lag between the roll out of products or services can often enable competitors or unscrupulous individuals to circumvent your branding strategy by establishing intervening trademark rights.

In many of these instances, companies and individuals often file intent to use applications to attempt to secure priority of trademark rights, and protect the investment in their advertising and branding campaigns.  However, the intent to use requires a bona fide intent to use the mark as claimed in the application to provide the products or services to consumers.  A recent ruling has put some teeth on the requirement to prevent a clogging of the USPTO Registry with intent to use applications that lack a bona fide intent to use the mark.

In addition to the affirmation regarding an intent to use, the TTAB and Courts will review surveys, business plans, financial and sales projections, product or service descriptions, and related materials to determine, if the Applicant had a bona fide intent to use the mark as claimed.  If upon review of these materials and items, the TTAB and/or Courts determine that there was not sufficient evidence to establish a bona fide intent to use the mark at the time the application was filed, then your application will be voided.  In effect, companies and individuals will lose the ability to claim prior rights based on the intent to use application.

In some instances, the companies and individuals may also face further penalties, such as, fraud upon the USPTO or trademark misuse claims in related or subsequent proceedings.  Consequently, it is more imperative for companies and individuals to protect themselves by establishing actual evidence of an intent to use  a mark contemporaneously or prior to the filing of an application.  Working with a trademark attorney earlier in developing your advertising and branding strategy can help avoid many of these obstacles.

If you have any concerns or questions, then please feel free to contact us.

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