The U.S. Patent and Trademark Office (USPTO) provides two options for trademark applicants to commence the trademark registration process. Applicants may seek registration for trademarks that are currently “in use” in commerce, or, if the mark is not yet being used in connection with the applicant’s goods or services, the applicant may file an “intent-to-use” trademark application.
So what exactly is an Intent-to-Use (ITU) trademark application and is it worth your time and money to file one? The short answer is yes! Even though the ITU trademark process does incur some additional fees, it provides a number of benefits that make it a worthwhile option for potential trademark owners.
Trademark applicants who have not yet used the mark they wish to register or who do not have proper specimens to show use of their mark in commerce may file an ITU trademark application to secure their place in line at the USPTO for that particular mark. In evaluating newly filed trademarks, the USPTO reviews its database to determine if there are any exact or similar registered or pending trademarks that may be confused with the newly filed mark. The USPTO may refuse registration of any mark if it finds the mark could create a likelihood of confusion with a prior registered trademark or pending application (whether filed as “in use” or “intent-to-use”). So your ITU application could effectively prevent subsequent applicants from obtaining registration before you (even if they filed an “in use” application).
The ITU application process is very similar to the application process for an “in use” mark, except there is no need to provide a trademark specimen. In addition, the applicant must include a sworn statement of their bona fide intention to use the mark and must begin actual use of the mark in commerce before the USPTO will allow trademark registration.
There are two possible fiilngs to advise the USPTO of actual use of the mark. First, an Amendment to Allege Use may be filed any time between the filing date of the application and the date the USPTO approves the mark for publication. Once the mark is approved for publication and following the 30-day publication period, the USPTO Examining Attorney will issue a Notice of Allowance. This is essentially a provisional approval, and the applicant must now file a Statement of Use showing actual use of the mark in commerce.
The applicant has six (6) months from the issuance of a Notice of Allowance to file a Statement of Use, unless an extension of time is requested and granted by the USPTO. There are additional fees associated with filing an Amendment to Allege Use (AAU) or the Statement of Use (SOU). If the AAU, SOU or request for extension of time is not timely filed, the application will become abandoned and registration will not be granted.
So in short, if you have not yet made use of your mark in commerce (as required by the Trademark Act to qualify for registration) or you’re awaiting the website, images, products, labels, brochures or other materials needed to demonstrate your use of the mark, the Intent-to-Use trademark application is a suitable option for you to begin the registration process and secure your trademark filing priority before the USPTO.
If you would like more information regarding Intent-to-Use applications or to discuss whether this is the right trademark filing basis for you, please contact a trademark attorney at Flat Fee Trademark for a free consultation (800) 769-7790, or email us, info@flatfeetrademark.com.
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