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Recommend Court Voids Registrations Based on Lack of Intent to Use Trademarks (Email)

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The District of Oregon took time out during the busy holidays to clarify what it means to have a bona fide intent to use.

That’s the statutory language an applicant swears to when filing a Section 1(b) application for federal registration — better known as an intent-to-use-based (ITU) application. It’s the alternative to a Section 1(a) use-based application and is a way to “reserve” a trademark registration for a mark that hasn’t yet been put to use.

But the applicant does need to have that bona fide intent to put the mark to future use.

In Bobosky v. Adidas AG, the District of Oregon found the applicant — an attorney — lacked that intent when he filed ITU applications to register WE NOT ME in connection with a wide variety of clothing products. Applicant W. Brand Bobosky’s applications matured to registrations when his attorney filed statements of use swearing that the marks had been put to actual use in commerce in connection with each item of apparel listed in the application.


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