Trademark owners who are not yet using their trademarks in commerce may apply for trademark registration with the U.S. Patent and Trademark Office (USPTO) through an “Intent to Use” trademark application.
At the outset, an Intent to Use (ITU) trademark application is treated just like an “In Use” trademark. Approximately 3-4 months after the application is filed with the USPTO, the application is assigned to an Examiner who reviews the application for errors or omissions, trademark distinctiveness, likelihood of confusion with registered or pending marks, and other qualifications for registration. If the application passes the Examiner’s review, the Examiner will approve the mark for publication in the USPTO’s Official Gazette. Up to this point, the ITU trademark application has been processed the same as an “In Use” trademark application.
If no third parties file either an opposition or request an extension of time to oppose the published application, the USPTO will issue a Notice of Allowance (NOA) about 8 weeks after the date the mark was published. The applicant then has 6 months from the date of the Notice of Allowance to either: (1) use the mark in commerce and submit a statement of use (SOU); or (2) request a six-month extension of time to file a Statement of Use.
A Notice of Allowance is a written notification from the USPTO that a specific mark has survived the opposition period following publication and has consequently been allowed. It is a provisional approval, but it does not mean that the mark has been registered yet. Receiving a notice of allowance is another step on the way to registration. Notices of Allowance are only issued for Intent to Use trademark applications.
Once the applicant starts using the mark in commerce, the applicant must notify the USPTO of such use so the mark can continue towards registration as an “in use” mark. If the applicant is using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must submit a Statement of Use and pay the required filing fee within 6 months from the date the Notice of Allowance issued or the application will become abandoned. The Statement of Use must include, among other things, the date on which use began and a trademark “specimen,” showing the mark as used in commerce in connection with the goods or services listed in the trademark application.
If the applicant is not using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must file an extension request and pay the required filing fee within 6 months of the issuance of the NOA to avoid abandonment. Because extension requests are granted in 6 month increments, applicant must continue to file extension requests every 6 months. A total of 5 extension requests may be filed. Subsequent requests for extension must be filed before the expiration of a previously granted extension.
If you would like more information regarding Intent to Use trademark applications or need assistance in preparing the Statement of Use, please contact one of our experienced trademark attorneys for a free consultation, 1.800.769.7790 or email your inquiry to info@flatfeetrademark.com.
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