Protect your trademark from challenges: good-faith intent to use

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 good-faith intent can be marshalled, 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 (No 16-1200 (6th Cir 2017)) did not result in a punitive cancellation 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.

The Lanham Act does not define 'good-faith' 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 good faith of the application include:

  • excessive numbers of intent-to-use applications in relation to the number of products the applicant is likely to introduce;
  • unreasonably vague descriptions of the proposed goods;
  • excessive numbers of intended products; and
  • excessive numbers of desirable trademarks intended for use on a single new product.

However, to demonstrate the presence of their good-faith intent to use a mark, brand owners can do a number of things. For example, the owner can:

  • conduct a trademark availability search on the mark;
  • develop marketing materials for the brand; or
  • 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 good-faith intent.

This is an insight article whose content has not been commissioned or written by the IAM editorial team, but which has been proofed and edited to run in accordance with the IAM style guide.

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