The United States trademark system is a “use” based system. Using your trademark bestows upon you the benefits of trademark ownership whether you register your trademark with the United States Patent and Trademark Office (“USPTO”) or not. If you don’t register it, you still have trademark rights but only for your particular goods and services in the geographical region in which you do business. This is known as a “common-law trademark.”
By registering your trademark with the USPTO, you gain nationwide protection, which is just one of the many advantages of trademark registration. When you apply for a trademark, you must still demonstrate actual use in commerce. If your application is based on intent to use, you must prove that you have a bona fide intention to use the mark. Failure to use your trademark can lead to cancellation or abandonment.
This raises the question of whether it is appropriate to file a trademark application as a defensive measure without any intention of using it in commerce. Ostensibly, a defensive filing would prevent other trademark users from registering the same or confusingly similar trademarks for the same or related goods. Interestingly, there is no express prohibition against defensive trademark applications. After all, every trademark registration has a defensive component. The purpose of obtaining a registration is to protect your brand from infringement. Nevertheless, purely defensive filings are frowned upon and may expose your trademark to cancellation or an expungement or re-examination hearing.
Reasons Not to File a Defensive Application
If you’re thinking of filing a defensive application, you should be aware of the reasons why you shouldn’t:
- It’s illegal. As we just discussed, use in commerce is required. U.S. trademark law requires that a mark be used in commerce to qualify for registration. 15 U.S.C. § 1051(a). If a mark is not used, it may be vulnerable to cancellation for non-use. 15 U.S.C. § 1064(3).
- Even if the filing is an intent-to-use application, there still must be a bona fide intention to use the trademark; otherwise, the application may be invalidated.
- A registered trademark can be canceled for non-use if it is not used in commerce for three consecutive years, creating a presumption of abandonment. Defensive filings that do not involve actual use are at risk of being invalidated.
- Defensive filing may be viewed as fraudulent. If an applicant knowingly files a trademark application without a true intent to use the mark in commerce, it may constitute fraud, leading to cancellation. See, for example, the In re Bose Corp. case.
- Defensive filings are viewed as anti-competitive and made in bad faith. Bad faith applications may face opposition or cancellation under 15 U.S.C. § 1064(3) and under general principles of unfair competition. 15 U.S.C. § 1125(a).
These reasons don’t always stop trademark owners from filing defensive trademarks. A recent example involves Norwegian Princess Märtha Louise and her husband, self-styled Shaman Durek Verrett, who filed a U.S. trademark registration for THE PRINCESS AND THE SHAMAN. The application covered a wide range of services in Class 041, including workshops and seminars on shamanism, personal development, and spiritual development.
At first glance, this seems acceptable. However, despite submitting “proof” of use to the USPTO, Princess Märtha Louise is quoted as stating that the purpose of the registration was to “ensure that no one else misuses it”—not to use it themselves. This admission raises serious concerns. A quick review of the specimens (i.e., examples of use) submitted by the applicant suggests that the trademark was not actually used in commerce within the United States, as required, but rather in Norway. Ideally, U.S. Trademark Examiners should have caught this discrepancy. Regardless, this kind of fraudulent filing fails to achieve the applicant’s intended goal, wastes USPTO resources, and contributes to the unnecessary bloating of the USPTO database. To date, no one has challenged the Princess’s trademark filing.
Bottom line: don’t do it.
— Adam G. Garson, Esq.