Avoiding a Surprise Attack: Complying with “Intent-to-Use” Requirements Under U.S. Trademark Law

The rules of the U.S. Patent and Trademark Office (USPTO) are full of hidden risks and pitfalls. Indeed, foreign applicants are often surprised to find their U.S. applications under attack for filing strategies that are perfectly legal in their home country. A particularly difficult USPTO rule for foreign applicants to understand is “the bona fide intent to use” requirement. Because the “intent-to-use” rule is alien to most foreign applicants, it is quite common for foreign applicants to get tripped up and make unnecessary mistakes that jeopardize their trademark rights in the U.S. This webinar addresses the following questions:

• Does the “bona fide intent-to-use” rule apply to ALL goods and services listed in application?
• Is lack of an “intent-to-use” grounds for opposing an application or cancelling a registration?
• What sort of evidence is necessary to show that an applicant has a “bona fide intent-to-use” the mark in the U.S.?
• Can I fix an application that does not comply with the “bona fide intent” rule?
  
  

Recorded: View On Demand

Moderator:
Yinfei Wu

Speakers:
Brett Heavner
Ningling Wang