So you are planning to hit the market with a new product or service, and you have an awesome idea for a unique brand. You know it’s important to protect that brand with a trademark. However, do you also know how important it is to make sure that your trademark application properly captures the correct owner of the mark and that you have appropriate documentation regarding your intent to use the mark?

In this article—the first of a three-part series—we’ll highlight a few critical issues you must understand before submitting that trademark application to the U.S. Patent and Trademark Office, or USPTO. In Part Two of this series we’ll address ownership issues and improper assignments of intent-to-use applications, and in Part Three we’ll discuss common errors that are made when filing trademark applications and which ones are correctable and which ones are fatal.

What are my options when filing a trademark application?

U.S. trademark applications must designate at least one of five filing bases at the time of filing.  The most commonly relied-upon bases include (1) use of a mark in commerce under §1(a) of the Trademark Act, and (2) bona fide intention to use a mark in commerce under §1(b) of the Trademark Act.

A § 1(a) use filing basis means that you are already selling products and/or services in commerce and that those products and/or services are branded with the trademark.

A §1(b) intent-to-use filing basis allows you to file an application to register a mark prior to establishing use of the mark in commerce.  When filing an application under §1(b), you must submit a sworn statement attesting to your good faith intent to use the mark in commerce. A key benefit to filing a trademark application prior to establishing use in commerce is that the filing of the application constitutes constructive use of the mark provided that the application subsequently matures into a registration.  Constructive use of the mark may also allow you to enjoy priority over another party’s subsequent use of a mark or subsequent filing of an application should a conflict develop.

In order to enjoy the benefits of an application filed under §1(b), it is critical to carefully consider when such an intent-to-use filing is appropriate, and what efforts and evidence should be documented in case your application or registration is later challenged.

When can I file an intent-to-use trademark application?

The applicant of a trademark application filed under §1(b) of the Trademark Act must be entitled to use the mark in commerce on the application filing date and must also have a bona fide intention to use the mark in commerce on the application filing date. Accordingly, your application under §1(b) should only be filed after you have established a bona fide intent to use the mark in commerce in the reasonably near future. If you are not the owner of the mark (or otherwise entitled to use the mark) as of the application filing date, or if you do not have a proper good faith intent-to-use the mark in commerce as of the application filing date, your application is void.

It is therefore important to carefully determine which entity has the bona fide intention to use the mark in commerce in order to correctly identify the Applicant. An application filed in the name of the wrong Applicant is defective and cannot be cured by an amendment or assignment.

For example, in one case, two individuals formed a partnership and together they had a bona fide intention to use a mark in commerce as of the filing date. However, because the trademark application was filed in the name of only one of the two individual partners as the Applicant, the application was void. (See Am. Forests v. Sanders, 54 USPQ2d 1860, 1864 (TTAB 1999).)

Also, you should be aware that the USPTO trademark examining attorney typically will not ask you if the named Applicant is correct. This can result in a risky circumstance where a void trademark application eventually matures into a registration that is de-facto invalid.

Similarly, the USPTO trademark examining attorney that examines a §1(b) trademark application will also not typically evaluate the applicant’s good faith intent-to-use the mark in commerce. Instead, the USPTO relies on your sworn statement of a bona fide intent-to-use the mark. However, an Applicant’s good faith may later be challenged by a third party seeking to prevent registration or cancel registration of your mark in what is known as an inter partes proceeding.

What efforts and evidence should I document?

If your good faith intent to use the mark in commerce is challenged by a third party, you want to be able to provide credible evidence to establish that you did in fact have a bona fide intention to use the mark at the time your trademark application was filed, not just an intent to reserve a right in the mark. A lack of contemporaneous documentary evidence could be considered objective proof that you lacked a bona fide intention to use the mark in commerce at the time of filing the trademark application.

So what evidence should you be collecting and keeping? A fair amount, as it happens. Keep any documentation of business plans and marketing plans, steps to obtain manufacturers or distributors, your ability to produce the goods, R&D, licensing agreements, marketing or promotional materials, artwork or packaging for the goods, and/or steps to obtain government approvals. It’s best if these documents make explicit reference to the trademark and the goods and services listed in your trademark application.  In one case, it was sufficient for the Applicant to document a business plan to find a licensee capable of bringing the goods to market.  (See Lane Ltd. v. Jackson International Trading Co., 33 U.S.P.Q.2d  1351 (TTAB 1994).) In that case, the Applicant was able to demonstrate that he a history of successfully finding licensees.

If you are considering trademark protection for your brands, your best bet is to be aware of these important considerations and seek legal guidance. It is critical that your trademark application is filed properly, and that contemporaneous evidence of your efforts to make use of the mark is well documented. This is essential in order to avoid potential pitfalls and prevail against possible future challenges.