A. Introduction: Intent to Use
United States trademark law allows people to register trademarks if:
- they are currently using their trademarks in commerce within the US; or
- they are not currently using their trademarks within the US, but have a bona intention to use the marks in commerce in the US in the future.
This post examines some of the requirements which relate to the second category above (“Intent to Use” Applications).
B. The Intent to Use Declaration
Applicants who are not actually using their marks in the US need to make formal declarations of their “intention to use” the trademarks as part of the application process. This is the case whether they are making the national applications “directly” within the US, or through the Madrid system.
The “Intent to Use” Declaration is often considered to be a mere formality, but it should be taken seriously. The act of making the declaration is subject to the penalty of perjury, and willful false statements can result in the invalidity of the trademark either in whole or in part.
C. Australian Applicants for US trademarks and the “Intent to Use” Declaration
For Australian applicants, the requirement to file an “Intent to Use” Declaration raises a couple of issues in particular which need to be considered.
1. Proving a “Bona Fide” Intention
Having a “bona fide” intention to use a trade mark in relation to certain goods or services within the US involves more than having a subjective and unsubstantiated intention to do so.
If challenged, the trademark applicant may be required to produce objective, documentary evidence to support the claim that there was an intention to use the trade mark. Such documentary evidence may include the following:
- business plans and evidence of market research into the US;
- board resolutions or minutes of meetings in which US export is discussed;
- dealings with the Department of Foreign Affairs and Trade or export consultants etc;
- evidence of travel to the United States;
- packaging or sales collateral specifically designed for the US Market;
- preparations made for promotional activities that will be undertaken in the US; and
- agreements or correspondence with potential licensees or distributors.
For many businesses, particularly start-up ventures, the amount of evidence available in the initial stages may be limited. It is important to capture whatever evidence you have when making the initial declaration, and you continue to record that information systematically, until you actually commence trading in the US.
2. “Laundry List” Applications and the “Intent to Use” Requirement
It’s not sufficient for Australian applicants simply to show that they had a bona fide intention to use their marks in the US. They need to be able to show a bona fide intention to use their marks in relation to all of the goods and services claimed in the application.
Strictly speaking, applicants for Australian registered trademarks should only apply for a trademark in relation to goods or services which they use or intend to use, however, IP Australia is generally less strict than its US counterpart (the USPTO) when it comes to this requirement. Accordingly, in Australia, it is fairly common for trade mark registrations to include a long list of goods and services that have been applied for on a “catch all” basis, and which are not being used, even after a number of years of trading.
When Australian applicants make Madrid Protocol Applications based on their Australian trademark applications or registrations, they should take care to remove any goods or services from the list which will not be sold in the United States.