By: Whitney Shirley
The Lanham Act includes two applications available for trademark registration under Sections 1(a) and 1(b). Section 1(a) is known as the "use" based application, whereas, Section 1(b) is the intent to use (ITU) application. Before the Trademark Revision Act of 1988, there was only one application offered for registering trademarks in the United States. For a mark to be deemed registerable, it had to satisfy the use in commerce requirement. The Lanham Act modifications introduced domestic applicants to seek registration of a trademark before use in commerce. Forming Section 1(b) created a dual application system for marks already used in commerce and for those projected marks.
Section 1(b) enables those who have yet to use their mark in commerce, with the intent to do so in the future, to file their application under an intent to use basis. The application’s only requirement is for trademark seekers to have a bona fide intent to use the mark in commerce. Although ITU trademark applicants must have more than just an idea, generally at least some initial business activities, they can be less than market ready. Further, unlike Section 1(a), since the applicant does not have to confirm that they have used the trademark in commerce, use can be shown at a later date than the initial filing.
Generally, ITU applicants should provide a statement of use within six months of receiving USPTO’s Notice of Allowance. However, the applicant could pay $125 to file extensions in 6-month increments. The applicant can submit five extensions totaling up to three years. Therefore, the ITU applicant does not need to use the mark in commerce for up to three years which enables trademark squatting.
Certainly, with the flexibility of the ITU application, there must be some applicants abusing the system, right?
Recently, it was reported that R&B singer, the Weekend sued a realtor by the name of Eymun Talasazan for attempting to register the “Starboy” trademark on two different occasions. Talasazan utilized the ITU application to register the “Starboy” trademark in association with entertainment services shortly after the Weekend released his album titled Starboy. He then filed another ITU application for the “Starboy” trademark in connection with comic books days after the Weekend and Marvel publicized a Starboy comic book collaboration.
It appears as though Talasazan has a history of filing other people's marks. Some of his ITU based applications include famous sayings such as "Runnin’ through the 6,” “Straight outta bompton,” and “Da Posse.”
Talasazan could be trademark squatting. Trademark squatters register other people’s mark as their own to gain benefit from the original mark or real trademark owners. Specific behavior that trademark squatters engage in is as follows:
(1) Offer goods or services that label the mark to consumers who believe the products or services are of the "real" owner;
(2) Assign the trademark back to the “real” owner after establishing use in commerce;
(3) Utilize the mark for marketing goods or services that are distant from those sold by the "real" owner; or
(4) Establish a claim of mark to exclude the "actual" owner from the market.
With the loopholes in the ITU application, there will always be people abusing the system.
Thus, trademark owners should always take preventative measures to avoid mark squatting to the best of their abilities.
Being proactive is always crucial. The Weekend should have filed an ITU application before making any public announcement of plans to collaborate with Marvel on a Starboy comic book. The application could be as inexpensive as $225 and might guarantee the real mark owner priority of the mark. Further, if plans change, the application can always be abandoned.
Hopefully, the Weekend will use this incident as a lesson and will take some preventive measures when dealing with future trademark matters.