Timing Considerations for Deciding What Goods and Services to Designate in an Intent-to-Use Trademark Application

When you file an intent-to-use trademark application you must designate the goods and services in the application. What should those goods and services be? This should be easy to answer, right? Its the goods and services that you intend to sell or render in connection with the trademark.

But, it might not be that easy to answer when you have a lot of different types of products or services that will be launched over a period of time. Should all of those be listed? Maybe. One factor to consider is the timing of when you plan to launch each of the planned products or services. This timing then can be compared to the probable deadlines you will encounter in your trademark application.

Trademark Deadlines

Presently, it takes about 9.5 months, on average, for a notice of allowance to issue in an intent-to-use application (See trademark total pendency stats). After a notice of allowance issues, you will have six months to file a statement of use and prove that you are using the mark in connection with all of the goods and services in the application. Therefore you have about 1 year and three and a half months from the filing date to prove that you are using the mark on the goods and services listed in the application, without paying for extensions of time.

If you do not use the mark in connection with all of the goods and services in the application you can file a request for extension of time. This will give you 6 more months to file a statement of use. You can request up to five extensions of time. But you must pay fees on a per class basis to the USPTO for each request for extension of time.

Application of Deadlines to Your Plans

Therefore, if you don’t want to pay for any extensions, the goods and services listed in the application should be those that you plan on selling or rendering under the mark within about a year and 3.5 months of the filing date of the application.

If you are willing to pay for extensions every six months, then you can extend the deadline to show proof up to 3 years after the notice of allowance. That would be 3 years and 9.5 months from the filing date under the current pendancy stats. Therefore, the goods and services listed in the application would be those that you plan to sell or render within that timeframe.

However, you will not receive a registration until you have filed a statement of use. So, if you need a registration quickly for enforcement purposes. You might decide to include only the goods and services that you will be selling or rendering within 9.5 months of filing, so you can quickly file a statement of use and receive a registration.

Split-off Option

If after you file, it becomes important to quickly get a registration for some goods/services when you are not selling/rendering under all goods/services, there is a split-off option. You can split off the goods/services that you are not yet selling into a separate application, and receive a registration on the goods/services you are using. Of course, there’s a fee for this split-off.

Keep Evidence of Intent to Use

Finally, the law requires that you have a bona fide intent to use a trademark on the goods/services listed at the time of filing. And that bona fide intent requires more than a subjective belief/intent. It requires objective evidence of intent as Swatch AG learned the hardway. Swatch’s trademark application for iWatch was found invalid because Swatch failed to show that it had an objective bona fide intent to use the iWatch mark at the time it filed its application.

iWatch

Therefore, you should keep evidence (documents, models, samples, prototypes, communications, etc.) to show that you had an intent to use the trademark on all of the goods/services that you list in the application at the time the trademark is filed.

The above timing considerations may be helpful in determining what goods and services you should designate in an intent-to-use trademark application.

Speculating in Trademarks is Fruitless: Race to Grab iWatch Fails for Lack of Bona Fide Intent

iWatchThe iPhone was released on June 29, 2007. Six days later on July 5, 2007, watch maker M.Z. Berger & Co. filed a trademark application on iWatch for watches, clocks, and related accessories. Coincidence?

Was the plan to grab up the iWatch trademark and sell it to Apple later? Too bad Apple went with “Apple Watch” instead.

Its a common misconception that filing a trademark application grants rights in a trademark without actually using the trademark. Just file a trademark application and the trademark is yours! No.

Speculating in trademarks without actual use of the trademark is a fruitless endeavor.

Watch maker Swatch AG filed an opposition against the iWatch trademark application. The TTAB, and later the appeals court, sustained the opposition and prevented the registration of iWatch because the evidence showed that Berger did not have a bona fide intent to use the iWatch mark with watches, clocks, and related accessories at the time the application was filed. M.Z. Berger & Co., Inc. v. Swatch AG, No. 2014-1219 (Fed. Cir. June 4, 2015). Instead, Berger merely intended to reserve the trademark.

Trademark rights are only acquired by using the trademark in conjunction with the sale/providing of goods or services. An intent-to-use trademark application can be filed before a trademark is used with products or services, but only if there is a bona fide intent–at the time the application is filed–to use the trademark with the goods/services described in the application. This is where Berger failed with iWatch.

You Can’t File an Application to “Leave All Doors Open” 

Berger ‘s CEO admitted that Berger never intended to use the iWatch mark for anything other than watches, but the application included clocks and related accessories. The paralegal who filed the application for Berger said the the CEO instructed her to register the mark for only watches and clocks, but she included other related accessories to “leave all doors open.”

An application can’t be filed to leave all doors open, you need to have a present bona fide intent to use the mark on all of the goods listed in the trademark application.

So, Berger admitted it did not intend to use the mark on clocks and accessories at the time the application was filed.

Conflicting Stories Don’t Engender Belief

Berger witnesses had conflicting stories about the evidence. For example, Berger presented images depicting mockups of an iWatch. Some employees testified that the images were pictures of actual mockup watches and clocks. But the CEO testified that no mockups were ever made and the the images were generated for the purpose of advancing the trademark application.

Also, Berger’s VP testified that he discussed the iWatch mark with a buyer. But the CEO testified that the iWatch had not been discussed with anyone outside of the company.

The court concluded it was proper to consider all circumstances regarding the Berger’s alleged intent to use the mark, including those facts that would tend to disprove that Berger had the intent. The TTAB and the court ultimately concluded that Berger did not have a bona fide intent to use the iWatch mark on watches.

Keep Evidence of Intent

Berger did not present any physical or documentary evidence relating to the iWatch watch beyond the images submitted to the USPTO.

Further the CEO testified:

Q. Okay. And how did you come up with that mark?

A. I think that I came up with the mark because of the advent of technology and information gathering around the globe over the last I guess few years, I thought that if we decided to do a — either a technology watch or information watch or something that would have that type of characteristics that would be a good mark for it.

The “if we decided” language indicates that Berger did not have a present intent to use the iWatch mark because Berger had not made a definite decision yet to proceed with a technological watch.

Further, Berger employees testified that Berger had not previously made a watch with technological features and admitted that they never took any steps toward developing such features at the time of filing the application or in the 18 months that followed.

A bona fide intent to use a trademark requires more than a subjective belief/intent. It “requires objective evidence of intent.”

Therefore, you should keep evidence (documents, models, samples, prototypes, communications, etc.) to show that you had an intent to use the trademark on all of the goods listed in the application at the time the trademark is filed. You should also keep such evidence that develops after the time the application is filed to show your efforts at bring the product and/or service to production/market using the trademark.