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Dobrusin Trademark Law

Use It (Soon) or Lose It: Understanding “Intent-to-Use” Trademark Applications

Effective branding is a critical component of any successful, consumer-facing business. But the process of developing and trademarking a name, design, logo, or tagline for your company can and usually should be a careful and deliberate one. No business wants to invest time, money, and effort to put their brand in the marketplace, only to subject it to infringement claims or other challenges. At the same time, you may have a brilliant trademark you want to protect ASAP, even if you’re not ready to use it. Filing an “intent-to-use” (ITU) trademark application with the U.S. Patent and Trademark Office (USPTO) could be the way to do it.

Trademark Registration Is Only for Marks That Are – Or Soon Will Be – Used in Commerce

Trademarks are designed to identify and distinguish companies, goods, and services from others in the marketplace. That is why the U.S. Patent and Trademark Office (USPTO) won’t issue a trademark registration for a mark that isn’t being “used”. Trademark registration is only available for marks that are “used in commerce,” and an applicant must demonstrate actual use before obtaining a registration. Most business owners believe that you must be currently using your mark to even apply for registration. In reality, waiting to file for your mark can actually cost you valuable time and allow someone to “get ahead of you’ in line.

For purposes of trademark registration, “use” or “use in commerce” means:

  • For goods, the applicant has placed the mark on the goods, packaging for the goods, or point-of-sale displays associated with the goods (including webpage displays), and the goods are actually being sold or transported in commerce. This is not an all-inclusive list and there are many exceptions, caveats, and rules relating to use on goods.
  • For services, the applicant uses the mark in the sale, advertising, or rendering of the services, and the services are actually being rendered in commerce.

Use in commerce cannot be token use just to reserve rights in a mark, but use must be in the “ordinary course of trade.” In other words, you can’t ship one product to your Aunt Diane in Ohio and claim use in commerce.

Many companies submit their applications after they’ve already satisfied the use in commerce requirement. However, if you have not used your mark in commerce yet but intend to do so in the not-too-distant future, you can start the process of protecting your mark by filing an application to register your mark on an intent-to-use (sometimes called a Section 1(b)) filing basis.

Getting a trademark application on file when a mark is ready, even if it’s not ready for use in commerce, is important in terms of the protections afforded by federal trademark registration. That is because when a dispute or challenge arises between two applicants or trademark holders whose marks are similar or conflict with each other, the party whose application has the earlier filing date will usually have an advantage both at the USPTO and in any infringement litigation.

Proving Use in Commerce After the Filing of an ITU Trademark Application

While the USPTO allows you to start the registration process before you use your mark in commerce, they will not wait forever for you to do so. In fact, there are strict filing deadlines for submitting proof that the mark is being used in commerce in connection with the goods or services identified in the application.

When the USPTO has allowed your mark to proceed to registration, i.e. finished their examination, they will issue a Notice of Allowance. The applicant then has six months from the date the USPTO issues a Notice of Allowance to file a Statement of Use (SOU) along with evidence of trademark usage (specimens of use), a signed declaration from the applicant confirming that use, and a filing fee. Alternatively, an applicant can pay a fee and file a request for a six-month extension for filing an SOU within that same deadline. These extensions can be requested every six months, with a fee, up to three years.  Once you have reached the extension limit, and you have not filed your NOA, the application will be deemed abandoned, having never obtained registration status.

Filing an intent-to-use trademark application can be a great way to get the ball rolling on your pursuit of federal trademark registration and all the benefits and protections registration provides. If you have questions about intent-to-use applications or need assistance registering your mark, please contact the patent attorneys at The Dobrusin Law Firm.

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