Section 1(b) of the Trademark Act allows trademark applications to be filed based on a “bona fide intent” to use the mark.2 For years, most applicants assumed that simply stating in a trademark application under penalty of perjury that they had such a “bona fide intent” was sufficient.
However, in oft-forgotten language, the Act also states that such a filing must be “under circumstances showing good faith.” The purpose of this requirement is to make clear that there must be some objective evidence of good faith and that the mere say-so of the applicant is not sufficient to prove a bona fide intent. Thus, merely “checking the box” on the application form does not meet the Act’s requirement that there be “circumstances” showing good faith.
The Trademark Office does not require applicants to provide any substantiation of their bona fide intent in the application itself. Thus, in most cases, there will be no need to provide any evidence of the circumstances that show good faith. However, an application (or even a resulting registration) may be challenged on the basis that the applicant did not have the requisite bona fide intent at the time the application was filed. It is in the realm of such disputes that proving the applicant’s intent becomes crucial.