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.