Can you have too many goods or services in a US trademark application?
Most foreign countries do not require use of the trademark for registration. So it is common to find a high number of goods or services in Madrid trademark applications that originate outside the US. The lack of a use requirement in foreign countries incentivizes trademark applications with excessive goods and services spanning several classes. If a foreign applicant does not have to show use in their country, why not throw everything in the Madrid application? Let’s see how US trademark applications by non-US Madrid applicants may lead to issues when covering several goods or services.
What is the problem with too many goods or services in a US trademark filing?
US law requires a bona fide intent to use an applied-for mark on all the goods or services identified in a US trademark application. This requirement applies to Madrid applications under Section 66(a) designating the US. The issue with excessive items is that the applicant may never have had a real intention to use the mark on certain items.
Any Madrid based application extending into the US with an extensive list of goods or services will always raise red flags regarding the lack of a bona fide intent to use the mark on each and every item identified in the application.
How would you show a lack of bona fide intent to use with excessive goods or services?
Proving a negative can be challenging. Nonetheless, it may be possible to show a lack of bona fide intent to use by pointing to the absence of business activity. For example, the nonexistence of any business plans or advertising might prove lack of bona fide intent to use, especially if tens or hundreds of goods or services are involved.
Before proceeding with a high quantity of items in the US, foreign applicants should examiner their own intent at the time of filing. Furthermore, non-US applicants should also consider whether they have any available evidence to support their genuine intent to use. Such evidence may come in handy if and when their US trademark filing is challenged.
Does a trademark registration with a high number of goods or services have a higher risk of a USPTO audit?
Yes, a registration with four or more goods or services in one class would qualify for the Post Registration Audit Program by the USPTO. A multi-class application with two or more goods or services in at least two classes would also be susceptible to a trademark audit.
How can foreign Madrid applicants improve their US trademark applications?
Non-US Madrid applicants can take steps reduce the vulnerability of their US trademark application. Any items with no realistic chance of being used in the US should be deleted. Ultimately, usage is not required to register a mark based on Section 66(a) or Section 44(e). The concern is whether the applicant had a bona fide intent to use the mark on all the items.
If selling certain goods or services are wildly unrealistic, a Madrid applicant should strengthen their US application by removing those items. Paring down the goods or services would result in a stronger US registration that may be able to withstand a challenge claim based on lack of bona fide intent use.
How to respond to Madrid provisional refusal by USPTO
Here is a helpful article on how to respond to a Madrid rejection in a US trademark application.
