Trademarks and Service Marks

Trademark Act Section 1(b)(1), 15 U.S.C. §1051(b)(1), provides that an applicant may file a trademark or service mark application based on a bona fide intention to use a mark in commerce "under circumstances showing the good faith of such person."

A verified statement that the applicant has a bona fide intention to use the mark in commerce must be included in intent-to-use (ITU) applications under §1(b), and in applications under §44 and §66(a). 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2), 1126(e), 1141f(a); 37 C.F.R. §§2.33(b)(2), (e)(1), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), (a)(5). See TMEP §804.02 and §1008 regarding the requirements for a verified statement in §1(b) and §44 applications, and §1904.01(c) regarding the requirement for a declaration of the applicant’s bona fide intention to use the mark in commerce in a §66(a) application.

If the verification is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.34(a)(2), (a)(3)(i), (a)(4)(ii). See TMEP §§804–804.05 regarding verifications.

A verified statement of the applicant’s continued bona fide intention to use the mark in commerce must also be included in a request for an extension of time to file a statement of use. 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a)(3), (b)(3); TMEP §§1108.02, 1108.02(e).

For permitted paper filings (see TMEP §301.02), reasonable variations in the wording of the statement may be acceptable. For example, the applicant may state that it has "a bona fide intention to use in commerce the mark on or in connection with . . .," or may use the words "good faith" instead of "bona fide." Id. at 1400. However, the wording "in commerce" is required and cannot be varied. In re Custom Techs., Inc., 24 USPQ2d 1712 (Comm’r Pats. 1991).

See TMEP §1008 regarding the requirement for an allegation of a bona fide intention to use the mark in commerce in an application filed under §44.

The USPTO normally will not evaluate the good faith of an applicant in the ex parte examination of applications. Generally, the applicant’s sworn statement of a bona fide intention to use the mark in commerce will be sufficient evidence of good faith in the ex parte context. The USPTO will not make an inquiry in examination unless evidence of record clearly indicates that the applicant does not have a bona fide intention to use the mark in commerce. For example, where an intent-to-use application recites commerce that is unlawful under another federal statute, an inquiry may issue. See TMEP §907.

Issues related to an applicant’s bona fide intent generally arise in the inter partes context. See Tequila Cuadra S. de RL de CV v. Manufacturera de Botas Cuadra, S.A. de C.V., Opp. No. 91282327, 2025 TTAB LEXIS 207, at *12 (2025) (quoting M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1375 (Fed. Cir. 2015)). The evidentiary bar for showing a bona fide intent to use is "not high, but more is required than ‘a mere subjective belief.’" Id. at *13 (quoting M.Z. Berger & Co. v. Swatch AG, 787 F.3d at 1375). The absence of any documentation showing an applicant’s bona fide intent generally constitutes objective proof sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce. Id. (quoting Bos. Red Sox Baseball Club Ltd. P'ship v. Sherman, Opp. No. 91172268, 2008 TTAB LEXIS 67, at *16, *25 (2008)) (applicant did not identify any communications, invoices, or contracts that would establish a bona fide intent to use the mark in connection with applicant’s goods in United States commerce, or any business plans or any internal or external business documents or communications regarding the same).

Collective Marks and Certification Marks

For an application of a collective trademark, collective service mark, collective membership mark, or certification mark filed under §1(b), the verified statement must specify that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce because use of these types of marks is by someone other than the actual owner. 37 C.F.R. §§2.44(a)(4)(ii), 2.45(a)(4)(ii)(C); TMEP §§1303.01(b)(i), 1304.02(b)(i), 1306.02(b)(i).

A verified statement of the applicant’s bona fide intention and entitlement to exercise legitimate control over the use of the mark in commerce must be included in intent-to-use (ITU) applications under §1(b), and in applications under §44 and §66(a). 37 C.F.R. §§2.44(a)(4)(ii), (a)(4)(iii)(B), (a)(4)(iv)(B), (a)(4)(v), 2.45(a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), (a)(4)(v)(B); TMEP §§1303.01(b)(i)-(b)(ii), 1304.02(b)(i)-(b)(ii), 1306.02(b)(i)-(b)(ii); see 15 U.S.C. §§1051(b)(3)(B), 1126(d)(2), 1126(e), 1141f(a). See TMEP §804.02 and §1008 regarding the requirements for a verified statement in §1(b) and §44 applications, and § 1904.01(c) regarding the requirement for a declaration of the applicant’s bona fide intention to use the mark in commerce in a §66(a) application.

If the verification is not filed with the initial application, the verified statement must also allege that, as of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce. 37 C.F.R. §§2.44(b)(2), 2.45(b)(2). See TMEP §1303.01(b)(i), §1304.02(b)(i), and §1306.02(b)(i) regarding verifications.

A verified statement of the applicant’s continued bona fide intention, and entitlement, to exercise legitimate control over the use of the mark in commerce must also be included in a request for an extension of time to file a statement of use. 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a)(3), (b)(3); TMEP §1108.02.