Intent-to-Use Trademark Applications

The U.S. Patent and Trademark Office (“USPTO”) permits trademark owners to file a registration application even before the owner actually uses a trademark so long as the owner has a bona fide intention to use it in interstate commerce.   The so-call “Intent-to-Use” trademark registration application is a useful tool because it lets owners “lock-in” a priority date for the proposed mark; it can act as a reservation of a mark during the branding process but before public use of the new product or service; and it can serve as notice to the world that the owner intends to use the mark — so keep your mitts off.

Before filing an intent-to-use application, trademark owners should think about the repercussions of filing an application, particularly if they have an active, loyal customer base.  The Michigan State University athletic department recently caused a maelstrom of discontent among students and alumnae when it filed an intent-to-use trademark application for a revamped Spartan helmet logo.  The filing was part of a renewed branding strategy advised by the university’s consultant, Nike, Inc.  Alumnae and students caught wind of the efforts when one of them found the university’s intent-to-use application in the USPTO database.  Yes, when you file a trademark application with the USPTO it is a public record.

Alumnae and students staged an online revolt, creating a Facebook page with more than 19,000 members dedicated to changing the administration’s mind, organizing petitions, and flaming Nike for interfering with university marketing. The power of public opinion was just too strong for the university. On February 5, 2009, the Director of Athletics yielded stating that “after careful consideration, we will use the current Spartan logo.”

The story aptly demonstrates the power of the Internet to influence corporate decisions and the care that trademark owners should take in rebranding their identities.  Now can we do something about Xfinity (á la Comcast)?

— Adam G. Garson, Esq.