I previously posted a blog which included a discussion on the meaning of bona fide intent in trademark law for intent-to-use (“1B”) applications. Click here to view the blog. Two recent July 2025 decisions by the Trademark Trial and Appeal Board (“the Board”) in ABC-Champion LLC v. Derek Buzak and Disney Enterprises., Inc. v. RH Lemonande drive home the point that an applicant’s mere representation of bona fide intent in a 1B trademark application without more may come back to “haunt” the applicant in any proceeding where bona fide intent becomes an issue.
Both referenced cases originated as opposition proceedings. Both opposers alleged: 1) that the applicants lacked bona fide intent to use the marks at the time the 1B applications were filed; and 2) that the applied-for marks would be likely confused with the opposers’ marks. The ABC-Champion proceeding involved the applied-for mark I FEEL LIKE A CHAMPION. The Disney Enterprises proceeding involved the applied-for mark OSWALD THE RABBIT. The applications for both marks were not filed by a trademark attorney but by the individuals who were claiming ownership of the applied-for marks.
In both proceedings, the TTAB first focused on the opposers’ claims of lack of bona fide intent. To overcome the opposers’ allegations, each applicant was required to provide documentary evidence or some type of substantiating evidence showing he they had the requisite intent to use the mark as of the date the application was filed. Neither applicant was able to satisfactorily comply with the requirement.
The evidentiary burden for proving bona fide intent is not a high one. The Disney Enterprises Board noted that “[t]he Board has held . . . that the absence of any documentary evidence regarding an applicant’s bona fide intention to use a mark in commerce is sufficient to prove that an applicant lacks such intention . . . unless other facts are presented which adequately explain or outweigh applicant’s failure to provide such documentary evidence.” Examples of documentary evidence are business plans and contracts, with, for example, a supplier or prototype developer.” Non-documentary types of evidence may include the applicant’s marketing efforts, e.g., working with a marketing professional or attendance at trade shows, etc. as of the application’s filed date. An applicant which has the demonstrated ability based on past products to produce the applied-for mark’s associated goods/services may also qualify as bona fide intent. See Wet Seal, Inc. v. FD Mgmt., Opp. No. 91157022.
Accordingly, lack of documentary evidence of bona fide intent is not necessarily fatal. Nevertheless, both the Disney Enterprises and ABC-Champion Cases, the Board concluded that neither applicant had the requisite bona fide intent required for establishing entitlement to a registered mark. For the Disney Enterprises applicant, past endeavors from four decades before his application’s filing date did not translate into the requisite intent required at the time the application was filed. At best, his reported activities were tentative. The ABC-Champion Enterprises applicant had no evidence of any type to offer. Both opposers won on the basis of lack of bona fide intent even without the Board even considering the likelihood of confusion claims.
It is important to understand that the application’s examining attorney will not generally question the intent-to-use applicant’s asserted bona fide intent. The USPTO depends on the applicant’s forthrightness regarding all provided statements and information. The issue of bona fide intent comes up in opposition proceedings and cancellation proceedings. In the latter proceeding, a party seeks cancellation of a registered mark due to the applicant’s original lack of bona fide intent.
Commentator’s Tips
I again note that in both cases, the applications were filed by non-trademark attorneys or “laymen.” As a trademark attorney, I always seek information from my intent-to-use trademark application clients as to what proof they have that they intend to develop the associated goods and services associated with the mark. If they lack any documentary proof during our first consultation, I make suggestions as to some steps they should take prior to the application’s filing date. For example, establishing a company by the same name as the proposed mark provides a modicum of proof. Business plans, non-disclosure agreements, memorandum of understanding with a potential manufacturer, rental lease agreement, domain name acquisition, social media presence, etc. are all types of valid proof should such proof ever become necessary.
One final cautionary note. It is important that the activities for establishing bona fide intent are taken in the name of what will be the source of the goods/services, typically the owner of the mark. Always remember that trademark law is focused on consumers – the right of the consumer to know that true source of the goods/services the customer is contemplating purchasing.
THANK YOU FOR YOUR INTEREST IN THIS BLOG. AS USUAL, THE CONTENT IS FOR INFORMATION ONLY AND IS NOT LEGAL ADVICE.
© 2025 by Troy & Schwartz, LLC
Susan Dierenfeldt-Troy
