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Evidence Needed to Prove Bona Fide Intent to Use

By Kyle-Beth Hilfer

The TTAB has opined on the meaning of a bona fide intent to use a trademark in connection with a Section 1b intent to use trademark application. None of these opinions, however, has delineated a clear bright-line test defining bona fide intent to use. In April 2009, the TTAB, ruling in Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009) [precedential], established the meaning in the context of a trademark application based on foreign registration rights under Section 44, rather than on use in interstate U.S. commerce. The TTAB looked for clear objective proof of a bona fide intent, rather than subjective assertions, in the face of an opposition proceeding.

The Trademark Act requires that an application be based either on use (Section 1a) or a bona fide intent to use (Section 1b), as recited in the application. Applications that rely on foreign applications (Section 44d) or registrations (Section 44e) or on the Madrid Protocol (Section 66a) also must include a verified statement that the applicant has a bona fide intent to use the mark in U.S. commerce.

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