Documenting Your Intent to Use

January 29, 2010

Choosing a trademark is often like a land rush.  Advertisers want the best, brightest, and biggest trademark, logo, or tagline they can find—far, far away from anyone else.  But they have to stake their claims before anyone else can think about using or claiming any rights to their exact marks or confusingly similar marks.  An advertiser may claim federally protected rights in its proposed trademark before it actually uses the mark in commerce by filing an “intent to use” application, which requires the advertiser to attach a sworn statement that it has a bona fide intent to use the mark in commerce.  In the rush, however, advertisers should not forget to formally document their plans to use the mark in the future.

NBOR Corp. recently learned this lesson the hard way when Research in Motion, owner of the BLACKBERRY mark, successfully opposed NBOR’s intent-to-use application for its proposed mark BLACK MAIL.  NBOR filed its intent-to-use application for the mark BLACK MAIL for “computer software that facilitates interactive communication.”  Research in Motion claimed that the mark was likely to cause confusion with its BLACKBERRY mark, opposed the application, and requested proof of a bona fide intent to use the mark in commerce.  NBOR could only point to its sworn statement of intent that accompanied its trademark application.

NBOR Corp. lost its argument for registration because it had no documentary evidence regarding its intent to use the BLACK MAIL mark.  The Board will look for an applicant’s specific plans to use the mark, including:

Certainly, a trademark applicant does not need all—or even most—of these items to have a bona fide intent to use a trademark, but applicants should have documentary evidence to demonstrate their intent should they face an opposition or cancellation proceeding.

When finalizing their intent-to-use applications and sworn affidavits, advertisers should remove themselves from the “land rush” mentality and confirm that they have documented evidence that establishes a bona fide intent.  Further, their evidence should include information about all of the goods and services described in the trademark application.  As a best practice, advertisers should create formal logs regarding their plans to use the mark for each product or service, including a target date of first use.