Be Sure to Preserve Records Documenting Actual Intent to Use When Filing For a Trademark

Filing for trademark protection in advance of the actual usage of a mark in commerce must be backed by clear documentary evidence of an actual intent to use if you wish to avoid losing the mark in a lawsuit.

The Trademark Trial and Appeal Board (TTAB), in a recent case, sustained opposition to an application based on intent to use (“ITU”) because the applicant offered no tangible proof of actual intent to use the mark when he filed his application and couldn’t produce any in discovery.

In PRL USA Holdings, Inc. v. Young, (Opposition No. 91206846, 10/16/13), opposer was the owner of several well-known trademarks. The applicant had filed an application to register the mark for use on shirts, based on ITU. But during discovery, the applicant produced no documentation of any negotiations, proposals or agreements to market, nor to manufacture any goods under the mark. In response to interrogatories, the applicant did not identify any products to be sold or any market research done in connection with the mark. Whenever he was asked for such proof, the applicant replied that he was in an “intent to use status” and had not done “any business planning yet.”

A PDF of the ruling can be found here.