Sarah Oglesby

3 February 2021

M.Z. Berger v. Swatch AG

RULE: An intent-to-use trademark application will only be granted if the applicant at the time of
the application has a bona fide, firm intent to use the mark in commerce and such intent can be
demonstrated through objective evidence.

ANALYSIS:
 Under §1(b) and (d) of the Lanham Act (15 U.S.C. §1051) applicants may file applications
for trademarks not yet in actual use in commerce based upon a bona fide intent to use
the mark in commerce, subject to a showing of actual use within a specified time frame
 In order to establish a bona fide intent, the applicant must demonstrate through a
totality of the circumstances a firm intent, based on objective evidence, to use the mark
in commerce and not merely retain the right to use the mark for some potential future
use

CONCLUSION: Board ruling affirmed.

Larami Corp. v. Talk To Me Programs, Inc.

RULE: A trademark may receive the priority benefits of a constructive-use date as of the date of
an intent-to-use application even if the mark acquired a secondary meaning after the
application was filed.

ANALYSIS:
 A party may use the ITU filing date both offensively and defensively
 An applicant may rely on its ITU filing date to defend against a common-law-based
opposition to its registration application, and may do so prior to actual registration of its
mark
 A mark that achieves secondary meaning after an ITU application may still permit the
applicant to rely on the constructive-use date

CONCLUSION: Motion for summary judgment granted for Larami.