In a recent article published in the Journal of Intellectual Property & Technology Law, Knobbe Martens partners Ari Feinstein and Charlene Azema explore strategies for asserting and defending against lack-of-bona fide intent claims at the Trademark Trial and Appeal Board (TTAB). A common argument raised by parties seeking to challenge registration of a trademark before the U.S. Patent and Trademark Office (USPTO) is that the defendant lacked the requisite bona fide intent to use the mark as of the application filing date.
“While this claim may appear straightforward, these proceedings regularly raise questions that every potential plaintiff (and defendant) should know about,” write Feinstein and Azema. Drawing on recent decisions in related trademark disputes, the authors outline the “guideposts” set by the TTAB and Federal Circuit for effectively asserting or defending lack-of-bona fide intent claims. These include “which applications the claim can be asserted against, the shifting burden of proof, the evidence needed to prevail on or successfully defend against such a claim, and the relief available to a successful plaintiff.”
To learn more on these key strategies for trademark litigation centered on intent-to-use issues, read the full article here.
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