Effective February 17, the US Patent and Trademark Office has amended its rules on trademark usage and intent to use.
The new rules are part of an effort to clear out “dead wood” — trademarks that are registered (and thus not available to others) but not actually in use by their owners.
An Intent-to-Use (ITU) trademark application lets an applicant start the trademark registration product before actually using a proposed mark in commerce. The date of the application can give the mark priority over a competing application filed later.
Applicants who file an application alleging an intent to use a proposed trademark may be required to support that intent if challenged in an opposition or cancellation proceeding.
The Lanham Act already requires trademark applicants to have a “bona fide intention” to use their trademarks in commerce.
However, the Act doesn’t define what “bona fide intention” means or how it can be proven.
According to the USPTO:
Your sworn statement of a bona fide intention to use the mark in commerce in your application is considered sufficient evidence of good faith. Generally, the USPTO does not evaluate your good faith when examining your application unless the application record clearly contradicts your own statement. However, considerations of good faith may be pursued by a third party in a legal proceeding, and so it is important to ensure you have documentation of your efforts to start your business involving the goods and/or services (such as product/services research or development efforts, market research, steps to acquire distributors, steps to obtain government approval) that relates to the date you filed your application.
Courts have held that a “generalized intention or desire to license the mark or partner with others at some indefinite time in the future” doesn’t qualify as a “bona fide intention” to use a mark.
With respect to marks already in use, the Act already requires a specimen showing the mark on at least one product or service in each class. Under the new rules, the USPTO may require additional proof of actual use (such as additional samples, exhibits, or declarations).
The USPTO has announced that it intends to randomly audit up to 10% of the affidavits or declarations filed each year in support of trademark applications. Trademark owners who are audited will have up to six months to respond and submit the required proof of use.
Trademark owners who fail to respond to an audit in a timely manner risk having their marks cancelled.