By MERLYNE JEAN-LOUIS, ESQ.
On September 8, 2017, international superstar Rihanna debuted her makeup line, Fenty Beauty by Rihanna. With the recent release of Fenty Beauty’s holiday collection, I (a makeup novice) could no longer stay put and went shopping!
While examining the impressive Fenty Beauty display at Sephora (see picture above), I could not escape the fact that I was a trademark lawyer. Rihanna provided me with the perfect opportunity to discuss trademark’s intent-to-use basis.
What's an intent-to-use basis?
When one files a trademark application, the applicant must choose a basis for the goods/services identified in the application:
Use in commerce. Under this basis, the applicant asserts that they are actually using the mark in commerce in connection with the identified goods/services. In other words, at the time they submit their application, the applicant is currently selling whatever good or service with the mark (ex. Apple in connection with cell phones).
Intent-to-use. Under this basis, the applicant asserts that in the future, they intend to use the mark in connection with the identified good/services. They are not submitting the application, for example, to spite a competitor.
Why would an applicant use the intent-to-use basis?
One major reason would be to protect business interests. Many celebrities do so prior to the launch of goods or services bearing their names. Because celebrities are well known, if they were to actually use goods and services before filing a trademark application, others may try to submit a trademark application bearing their name (caveat: the right of publicity, which is associated with an actual person, would probably deter others from doing so).
Companies also file under this basis. For example, Facebook has filed many of its trademark application under the intent-to-use basis. However, the right of publicity wouldn’t work for a company like Facebook. In essence, if an applicant has a good or service that they believe will become widely used, they should consider submitting a trademark application under the intent-to-use basis.
Can an applicant use the registered trademark symbol (®) if they file an application under the intent-to-use basis?
No. Only trademarks/service marks that have been officially registered can use that symbol.
Can I submit an application under the intent-to-use basis and reserve it forever?
No. From the time the USPTO approves a notice of allowance (in lieu of registration), an applicant has six months to submit something called a statement of use. If an applicant cannot file the statement within that six-month period, they can file for a six-month extension.
Thank you for the trademark lesson. But, what does all of this have to with Fenty Beauty by Rihanna?
My pleasure! Fenty Beauty's display at Sephora and the item I purchased (the Match Stix Trio) did not contain the registered trademark symbol. That prompted me to research Fenty Beauty’s trademark history.
Rihanna’s company filed a trademark application under the intent-to-use basis for the marks “Fenty Beauty by Rihanna” and “Fenty Beauty” in connection with makeup on March 14, 2016 and December 19, 2016, respectively. While the latter has had some issues during the application process, the former was granted a notice of allowance on November 29, 2016. Thus, Rihanna would have had until May 29, 2017 to file a statement of use.
However, Rihanna filed a request for a six-month extension, which was approved. Thus, Rihanna now has until November 29, 2017 to submit the statement of use. Since Rihanna started using the mark “Fenty Beauty by Rihanna” in connection with makeup on September 8, 2017, she should submit the statement as soon as possible to continue with the trademark process.
For more information about trademarks, read these blog posts about the Kardashian/Blac Chyna trademark battle and trademarking viral phrases. For more information about the right of publicity, read this blog post about Youtubers or contact us here.
Update February 7, 2018:
On November 29, 2017, a statement of use was submitted for Fenty Beauty in connection with makeup. On February 6, 2018, Fenty Beauty was granted a trademark registration in connection with makeup.