Monday, June 21, 2010

Recommended Reading: "Bona Fide Intent to Use in the United States and Canada"

Here's the second entry in your summer TTABeach-reading package: an article by Daniel R. Bereskin, Q.C., Miles J. Alexander, and Nadine Jacobson, entitled "Bona Fide Intent to Use in the United States and Canada," 100 Trademark Reporter 709 (May-June 2010). [pdf here].

The authors review the legal and logical underpinnings of the bona fide intent requirements in the United States and Canada, and then turn their critical attention to the Community Trade Mark (CTM) system:

The argument of this essay is that bona fide intent to use should be an essential prerequisite for filing a trademark application in any country or region where protection is sought, and in particular in the European Union (EU) when filing an application for a Community trade mark (CTM). The interests of both traders and the public are best protected by a system that ultimately requires use or reputation of trademarks to justify injunctive relief.

The article concludes with a number of recommendations for improvement of the CTM system, as well as one recommendation aimed at U.S. trademark law: The Lanham Act should be amended to require foreign applicants relying on a home registration under Section 44(e) to have used the trademark somewhere prior to registration in the United States in relation to the specific goods and/or services. [Emphasis added].

[This article is Copyright © 2010 the International Trademark Association, and is reprinted with the permission of The Trademark Reporter®, Volume 100 (May-June 2010).]

TTABlog comment: For a companion piece on the bona fide intent issue, see Sandra Edelman's 2009 article, "Proving Your Bona Fides - Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act," 99 Trademark Reporter 763 (May-June 2009). [TTABlogged here].

Text Copyright John L. Welch 2010.


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