Hot Topics in Trademark Law 2015 Series: The Federal Circuit Clarifies Intent To Use – Part 1

You Have To Really Mean It, And Be Prepared To Prove it, When You Declare An Intent To Use A Mark

Note: This blog post is part of a series that reviews and discusses a number of significant trademark-related decisions handed down in 2015, including two from the U.S. Supreme Court and several from the U.S. Court of Appeals for the Federal Circuit and other Circuit Courts. Going forward, these rulings will impact how parties protect their trademark assets, including in particular the strategies that parties will need to employ to maximize their likelihood of success in litigation. To follow the entire blog series, click here.

Prior to the Trademark Law Revision Act of 1988 ("TLRA"), the owner of a mark had to be using his mark when he applied for registration. See Aycock Eng'g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009). The TLRA changed this requirement and allowed mark owners to apply for registration before they actually used the mark in commerce, so long as the owner had a "bona fide intention ... to use [the] mark in commerce" in the future. 15 U.S.C. § 1051(b)(1); Lanham Act Section 1(b). While an applicant can file for registration of his mark based on an intention to use the mark in the future, he must in due course either (1) file a verified statement of actual use of the mark in commerce, or (2) convert his application to a use-based application. 15 U.S.C. § 1051(b)(3), (c), (d). Simply put, applicants must show that the mark is being used in commerce in order for the mark to be registered. Until recently, it was an open question whether a party could oppose registration of a mark on the basis that there was no bona fide intent to use the mark. The Federal Circuit has now confirmed that this is, indeed, an appropriate basis to challenge registration because "[a]n opposer is 'entitled to rely on any statutory ground which negates [an applicant's] right to the subject registration.'" See M.Z. Berger& Co., Inc. v. Swatch AG, 787 F.3d 1368, 1375 (Fed. Cir. 2015) (quoting Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1031 (CCPA 1982) (citing Warth v. Seldin, 422 U.S. 490, 501 (1975))); see also Aktieselskabet AF 21.Nov. v. Fame Jeans Inc., 525 F.3d 8, 21 (D.C. Cir. 2008) (holding the same). Having decided that lack of a bona fide intent is an appropriate basis for an opposition, the court turned to the question of what "bona fide intention" means under Section 1(b) of the Lanham Act. Recognizing that there...