Last month, McDonald’s Corporation filed an intent to use trademark application with the United States Trademark and Patent Office for the phrase THE SIMPLER THE BETTER.

According to a company spokesperson, McDonald’s regularly files intent to use trademark applications for various names or phrases. An intent to use trademark application indicates that McDonald’s has not yet started using the trademark, but has the intention of using it soon.

What is an Intent to Use Trademark Application?

The US has two types of trademark applications: 

1. Application based on use of the trademark; or 

2. Intent to use trademark application. 

An application that relies on trademark use can only be filed if the trademark has in fact been used. An applicant would need to provide information relating to the first date of use and evidence supporting trademark use.

On the other hand, an applicant for an intent-to-use trademark will need to provide evidence or a statement of use within six months of filing the trademark application. If the applicant has not begun using the trade mark within that time, they can apply for an extension as long as they can explain to the USPTO the reason for the delay.

Intent to Use in Australia

Australian trademark applications do not differentiate between trademarks that are in use and trademarks that will be used. Instead, Australia treats trademark applications for marks that have been used for a number of years and marks that have not yet been used the same.

That is not to say, however, that an applicant for an Australian trademark will not need to provide evidence demonstrating the use or intention to use the trademark. If IP Australia or another party raises an objection to the trademark application, the applicant may be asked to provide evidence in support of the application. If the application is for a mark that has been in use, the applicant would be able to provide evidence of use. If it is a mark that the applicant intends to start using, they may need to prepare a declaration which shows evidence of their business plan and intention to use the trademark and financial evidence of the costs already incurred regarding the mark.

Bona Fide Intent

In both Australia and the US, an applicant needs to be able to show that they genuinely intend to use the trademark and are not registering the trademark in bad faith. In the US, this requirement is particularly important where the applicant is filing an intent-to-use trademark application.

In Australia, a third party can apply to IP Australia to remove a registered trademark because the trademark owner is not using the trade mark in good faith or because the owner had no intention to use the trademark. One exception to an applicant having to show evidence of their intent to use is in relation to defensive trade marks.

Key Takeaways

Keep your eye out for the American McDonald’s SIMPLER IS BETTER campaign. They will need to follow up their intent to use application with a statement of use within six months. Australian trademark applicants and owners need to remember that they are vulnerable to objections or removal from the registry if they cannot back up their trademark with evidence of use or a genuine intention to use the trademark.

Questions? Get in touch with our trademark lawyers.

Dhanu Eliezer

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