Intent to Use: A Failed Experiment?
Western New England University School of Law
University of San Francisco Law Review, Vol. 35, p. 683, 2001
When Congress enacted the Trademark Law Revision Act of 1988 ("TLRA"), it made the first truly radical change in trademark law since the passage of the Lanham Act in 1946. By adding Section 1(b) to the Lanham Act allowing applications for federal trademark registration to be based on an intent to use the mark, Congress for the first time provided a way to apply for federal trademark registration before actual use of a trademark. Congress made this change to bring United States law into closer conformity with the practice elsewhere in the world where use is not a prerequisite to trademark protection. Congress, however, did not go so far as abandoning completely the long American legal tradition that bases trademark ownership and protection on actual use of the mark in connection with the goods or services the mark is intended to identify. The TLRA, while allowing one to file an application based on an intent to use ("ITU") a mark, makes registration itself contingent upon actual use within a set period of time after the issuance of a notice of allowance for the intent to use application. Thus, there is not complete protection until after actual use of the mark has occurred. The TLRA is Congress's attempt to straddle two positions: the American tradition requiring use for trademark protection and the emerging practice elsewhere in the world that does not require such use prior to obtaining trademark protection.
This half-way position has created numerous problems and has in many ways failed to accomplish the goal of bringing American law into conformity with the rest of the world. While attempting to clarify the definition of the term "use," it has instead created a morass of varying definitions. Procedural issues have arisen as to the effect of an intent to use application vis-a-vis those who oppose such applications or those who use the applied for mark before a registration actually issues.The American position has also made it more difficult to determine who is entitled to use a mark and under what circumstances. Unfortunately, it is not clear whether there are sufficient benefits from this change in the law to outweigh the numerous problems it has created. It is therefore time to re-evaluate the experiment with the intent to use approach and consider whether Congress should either turn back the clock to pre-1988 law or move forward toward a system that is less based on use of trademark as the prerequisite to legal protection.
Part I of this Article summarizes the pre-TLRA history of trademark use and the changes made by the TLRA. Part II addresses the confusion that exists with respect to the meaning of "use" in a postTLRA world. Part III identifies the procedural problems the TLRA has created. Part IV considers whether the ITU provisions of the TLRA have achieved the Congressional goals for enacting the statute. Finally, in Part V, an argument is made for serious re-examination of the intent to use regime created by the TLRA.
Number of Pages in PDF File: 44
Keywords: trademarks, Trademark Law Revision Act of 1988, intent to use, intellectual property
Date posted: December 13, 2011 ; Last revised: December 28, 2011