Should I Apply For An Intent to Use Trademark Application

Trademark Attorney Learning Series
Thinking of Applying for An Intent to Use Trademark Application at the USPTO? Here’s What to Consider Beforehand.

Intent to Use trademark applications are a unique aspect of the trademark registration process. Intent to Use trademarks, or ITU applications, allow would-be trademark owners to secure rights to a trademark before actually using it in commerce. There are myriad benefits to filing a trademark application, but intent to use trademark applications have particular benefits and some downsides that you should be aware of.

Advantages of Filing an ITU Trademark Application

1. Early Protection: One of the primary advantages of filing an intent to use trademark application is the ability to secure trademark rights before actually using the mark in commerce. This proactive measure helps prevent others from registering a similar mark during the development and planning stages of a new product or service.
2. Market Testing: You may need to conduct market research or product testing before fully launching your product or service. An intent to use trademark application allows you to gauge consumer response and make informed decisions about the potential success of your brand without the risk of losing your trademark to a competitor.
3. Build Investor Confidence: If you’re seeking early funding, an intent to use trademark application can provide assurance to potential investors or partners that you are serious about your brand and have taken steps to protect it, even before it is in use.
4. Strategic Planning: Intent to use trademark applications can be a strategic planning tool. It allows you to establish an early filing date for your trademark. It also allows you additional time to finalize product development and fine tune your marketing strategies and other branding elements.

Potential Downsides to Intent to Use Trademark Applications:

1. Requirement to Show Use – This is not really a disadvantage because it applies to all trademark applications, but you will have to show use of your mark in commerce before the U.S. Patent and Trademark Office (USPTO) will permit registration of your trademark.
2. Additional Costs – Applying for an Intent to Use trademark application incurs additional legal and government filing fees for the Statement of Use (SOU). These costs would not apply to “in-use” trademark applications. Plus, you may have to request and pay for extensions of time to show use if your product or service development process takes longer than expected.
3. Longer Application Process – An intent to use trademark application may result in a longer trademark registration process. Your trademark will not be officially registered until you submit the SOU with images showing how you’re using the mark and it is accepted at the USPTO. This could take many months or even years, depending on how long it takes you to begin using the mark.
4. Potential Legal Challenges – All trademark applications, including intent to use applications, are public records. You could open yourself or your company up to potential legal challengers from other trademark owners if they believe your pending trademark is too similar to theirs. This could complicate your branding and business processes before you even get started.

To work with our team of licensed trademark attorneys to help you navigate the Intent to Use Trademark Application process, or to apply for a use-based trademark, click this link to get started. We have more than 20 years of experience in trademark law.