There are two types of trademark applications in the US:
- one based on current use of the trademark in commerce in the US for the goods or services claimed [a 1(a) application]
- one based on a “bona fide intent” to use the trademark in commerce in the US for the goods or services claims [a 1(b) application]
In recent years, several oppositions to applications filed based on the “bona fide intent” have been cancelled because the applicant could not provide enough evidence to support its claim that it had a bona fide intent. How much evidence should be required to show that an intent is bona fide? Should evidence of the applicant’s “bona fide intent” be required at all if there is no evidence showing that the intent in filing the application was malicious or deceptive? These are questions that may be re-examined in a new light given last year’s decision by the Court of Appeals for the Federal Circuit in Bose, which made it clear that claims of fraud are subject to a higher standard, and that they must be proven by “clear and convincing” evidence. At least that is what our office argued this week in a filing to the Trademark Trial and Appeal Board.
In other words, a declaration regarding an Applicant’s bona fide intent to use its mark is exactly the type of statement that Bose addresses and for which the Federal Circuit mandates ahigher standard. Consequently, Bose requires that an allegation that an applicant under §1(b)lacked a bona fide intent to use the mark on goods and services must be plead with particularityand proven with clear and convincing evidence. FRCP 9(b); Bose, 91 USPQ2d 1938.
Comments from any attorneys who have encountered this issue or have any thoughts on it are welcome.