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Intent to Use

By Ed Komen

Bona fide intent, the sine qua non of non-use trademark applications, was given new meaning by the Trademark Trial and Appeal Board (TTAB) in a decision released unpublished Feb. 21, 2014, but redesignated as precedent on March 26, 2014. The decision, Lincoln National Corporation v. Anderson, Consolidated Opposition Nos. 91192939 and 91194817, TTAB Mailed Feb. 21, 2014, exemplifies an apparent trend of the TTAB requiring greater proof of an applicant's “intent” as a jurisdictional prerequisite for filing an application or face a finding that the application is void ab initio . This finding may result from an opposition but, perhaps more significantly, from a cancellation many years following registration. In other words, this is the paradigm of the “ticking time bomb” trademark nightmare with a very long fuse.

The Trademark Law Revision Act of 1988 (TLRA), effective Nov. 16, 1989 Public Law 100-667, Nov. 16, 1988, 102 Stat. 2925, 100th Cong., introduced the concept, then alien to U.S. trademark law, of “intent to use” as a filing basis under Section 1(b) of the Trademark Act. Prior to that time, only owners of foreign applications were entitled to file without showing use under Section 44(d), and only then entitled to registration in the U.S. under Section 44 (e) following issuance of the foreign registration itself. In order to avoid frivolous applications filed merely to tie up names on the public records, the TLRA also introduced the requirement that such “intent” be “bona fide” to use the mark “in commerce” and “under circumstances showing the good faith of such person.” The Section 45 definition of “use in commerce” reinforces the need for an objective manifestation of “intent” by providing, “The term 'use in commerce' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”

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