Intent to Use

The Trademark Law Revision Act of 1988 (TLRA), effective Nov. 16, 1989 Public Law 100-667, Nov. 16, 1988, 102 Stat. 2925, 100th Cong., introduced the concept, then alien to U.S. trademark law, of “intent to use” as a filing basis under Section 1(b) of the Trademark Act. Prior to that time, only owners of foreign applications were entitled to file without showing use under Section 44(d), and only then entitled to registration in the U.S. under Section 44 (e) following issuance of the foreign registration itself. In order to avoid frivolous applications filed merely to tie up names on the public records, the TLRA also introduced the requirement that such “intent” be “bona fide” to use the mark “in commerce” and “under circumstances showing the good faith of such person.” The Section 45 definition of “use in commerce” reinforces the need for an objective manifestation of “intent” by providing, “The term 'use in commerce' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”

The requirement of a “bona fide intent.” however, is not confined to trademark applications filed under Section 1(b). The same requirement is found in Section 44(d)(2) for applications based on foreign trademark filings, and in Section 66(a) as a requirement for extension of U.S. protection to an international registration under the Madrid Protocol. In other words, failure of proof of a bona fide intent can be used as a basis for opposing or cancelling any U.S. trademark application or registration not based on use.