Make Sure There Is Evidence Of A Bona Fide Intent To Use Before Filing That Intent-To-Use Application!

In the recent case of MZ Berger & Co. v. Swatch AG, the US Court of Appeals for the Federal Circuit affirmed a decision by Trademark Trial and Appeal Board (TTAB) to sustain an opposition to MZ Berger’s intent-to-use application for the trademark “iWatch.”  By way of background, an intent-to-use application allows an applicant to essentially reserve a trademark so long as it has a “bona fide intent to use” the trademark in the future.  The issue that has arisen in numerous cases over the years is what exactly is required to establish the requisite bona fide intent to use.

In the MZ Berger case, the evidence showed that MZ Berger only had an “aspiration” to reserve trademark rights in the iWatch name in case in decided to develop an associated watch.  MZ Berger had never sold watches before, and there was no evidence that MZ Berger had ever taken any steps towards developing a watch product.  The Federal Circuit therefore concluded that there was no evidence of a bona fide intent-to-use the iWatch mark.

The take-away from the MZ Berger case is that a mere subjective intent to use a trademark in the future is not a sufficient basis to establish a bona fide intent to use.  Instead, if an intent-to-use application is challenged, the applicant must be able to produce objective evidence showing that concrete steps had been taken as of the date the application was filed to start commercializing the product or service to be marketed and sold using the proposed mark.

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