International Language Translation Services and Trademark Applicants’ Bona Fide Intent to Use

We’ve blogged about legal translation and legal interpreting services in the context of trademark and patent translations from and into various foreign languages. According to US trademark law, the filing of trademark applications protect trademarks which are not yet actually in use in commerce. In essence, the law allows for the filing of a trademark with the benefit of constructive use and priority based on the applicants’ bona fide intent to use the mark. The question then is, what constitutes a bona fide intent to use?

Take for example the recent case Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 USPQ2d 1660 (TTAB 2009), which demonstrates the consequences of failing to show the required intent.

In this case, the court sustained Honda’s opposition to ‘intent to use’ application, ruling that Winkelmann failed to establish the requisite bona fide intent to use in the US. To avoid this situation, applicants should take such steps as:

  • conducting a trademark availability search
  • performing preparatory graphic design work or labeling on sales material for a product;
  • using a mark in international jurisdictions
  • using a mark in test marketing
  • testimony regarding informal, unwritten business plans or market research
  • obtaining necessary regulatory permits
  • obtaining a correlative domain name for the mark or setting up a website
  • making contacts with individuals who might help develop a business;
  • correspondence mentioning the planned use of the mark
  • attempts to find licensees, including ones outside of the U.S.
  • obtaining commercial space in which to perform the services.

Further, if the trademark is intended to be used outside of the US, then these same steps should be taken utilizing all foreign language variations of the terms. For this reason, having a foreign language translation of the mark – and all related content – is essential.

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