In the United States if a trademark is not in use, an applicant can still apply for a federal trademark application based on a bona fide intent to use the trademark in commerce. However, in a recent decision in the District of Oregon, Bobosky v. adidas AG, the court invalidated two trademark registrations because the applicant lacked the requisite bona fide intent to use the trademarks in commerce on all of the items set forth in his initial intent to use trademark applications.
Under the trademark laws of the United States, the first person to use a trademark has superior rights in the mark. However, an applicant may file an intent to use application before use of the trademark has begun based on a bona fide intent to use the trademark. The benefit to filing a trademark application before use has begun is that it allows the applicant to claim a first use date based on the date the application was filed, rather than the date the trademark is first used in commerce. The Court in Bobosky invalidated the trademarks at issue because the plaintiff did not have a bona intent to use his trademarks in commerce on every item listed in his original trademark applications.
Take Away: Caution should be used when filing intent to use trademark applications and the description of goods and services should be limited to those for which the applicant has a bona fide intent to use. Including extraneous goods and services in an intent to use application could jeopardize the resulting registration.