Intent to use applications and the USA


In Australia, you may apply for a trade mark application on the basis either that it is already in use or you (the applicant) intend to use it. 

Intention to use can be a pretty nebulous concept and it is not uncommon for the statement of goods and services to be rather widely drawn.

Having filed your application, you can rely on it as a basis for a US application.

In the USA, however, traditionally trade mark applicants had to demonstrate actual use of the mark in trade and commerce in the States for all goods and services for which registration was sought to achieve registration.  US law has been amended to permit reliance on foreign 'intent to use' applications but ...


according to the TTAB blog, the whole application may be void ab initio if the tough rules adopted by the TTAB on fraud are not treated carefully:

When filing the Declaration of Use under Section 8 or Section 71, the owner must delete every item for which its mark is not in use in U.S. commerce. Failure to do so, and the filing of a Declaration that includes goods or services that should have been deleted, renders the registration vulnerable to a fraud attack that could result in the registration being declared void as to one or more classes of goods or services.

Lid dip Marty Schwimmer. Read the full discussion here.


Posted: Wednesday - 27 February, 2008 at 09:15 AM         |


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