Why Can’t I File an Application to Block Someone Else From Using a Trademark?

Let’s say someone mentions a new brand that they’re working on. It sounds great. The name is catchy, and it seems pretty clear that it’s going to take off and be big. Out of curiosity, you check the USPTO database system, TESS, to see if they’ve filed for the trademark yet. They haven’t. Suddenly, ideas are swirling in your head. What if I trademark this name, and then sell it to them? It’s just business, I should be able to do that, right?

a hand reaching to open a cookie jar

Let’s say someone mentions a new brand that they’re working on. It sounds great. The name is catchy, and it seems pretty clear that it’s going to take off and be big. Out of curiosity, you check the USPTO database system, TESS, to see if they’ve filed for the trademark yet. They haven’t. Suddenly, ideas are swirling in your head. What if I trademark this name, and then sell it to them? It’s just business, I should be able to do that, right?

Well, not so fast. Before you file a trademark application, you need to understand the concept of bona fide intent to use a mark in commerce and why it is important for your trademark registration process.

What is a bona fide intent to use the mark in commerce?

Bona fide intent is a legal requirement that applies to trademark applicants who file their applications based on an intent-to-use basis under Section 1 (b) of the Trademark Act. This means that the applicant has not actually used the mark in commerce yet, but has a good faith and genuine intention to do so in the near future. The key here is “good faith and genuine intention.”

A bona fide intent to use the mark in commerce means that the applicant has more than just a mere idea or hope to use the mark someday. The applicant must have concrete plans and evidence to support their intention, such as:

  • Product or service development

  • Market research

  • Manufacturing or distribution agreements

  • Marketing or advertising materials

  • Licensing or franchising arrangements

  • Business plans or budgets

The USPTO may request the applicant to provide such evidence during the examination process or after the issuance of a Notice of Allowance. The applicant must also submit a Statement of Use with proof of actual use of the mark in commerce before the mark can actually be registered.

Why can’t I file an application to block someone else from using a trademark?

You can’t file an application to block someone else from using a trademark because it violates the bona fide intent requirement. If you file an application without having a real and honest intention to use the mark in commerce, you are committing fraud on the USPTO and risking your trademark rights.

Some of the consequences of filing an application without bona fide intent to use mark in commerce are:

  • Your application may be rejected or canceled by the USPTO if they discover your lack of intention during the examination process or after the issuance of a Notice of Allowance.

  • Your application may be challenged by third parties who have prior rights or legitimate interests in the mark. They may file an opposition before the Trademark Trial and Appeal Board (TTAB) or a cancellation after your registration.

  • Your registration may be invalidated by a court if you are sued for trademark infringement or dilution by the rightful owner of the mark. The court may find that you have no rights or defenses based on your fraudulent registration.

Therefore, it is not advisable to file an application to block someone else from using a trademark. Not only is it unethical and unfair, but it is also illegal and risky. You may end up losing your money, time, and reputation.

How can The Trademark Place help you with your trademark application?

Instead of trying to take someone else’s name or waiting for a big payday that’s not going to come, the better approach would be to create your own trademark and start your own brand. If you need help with filing a trademark application based on an intent-to-use basis, you can consult with The Trademark Place; we are a trademark law firm that specializes in trademark registration and protection. We can assist you with:

  • Conducting a comprehensive trademark search and clearance

  • Preparing and filing your trademark application with the USPTO

  • Responding to any office actions or requests from the USPTO

  • Submitting your Statement of Use and proof of use of your mark in commerce

  • Monitoring and enforcing your trademark rights against infringers

We have extensive experience and knowledge in trademark law and can guide you through every step of the trademark registration process. Contact us today for a free consultation and quote.