An intent-to-use trademark application is a trademark filing made before you actually have any sales of your products or services in the marketplace. There are a few scenarios in which this type of filing is more beneficial than a standard in-use application.
Three Reasons Intent-To-Use Applications Are Beneficial
There are three main reasons that filing an intent-to-use trademark application can be extremely beneficial for your brand.
1. The filing date of your application can become the federal priority date in your trademark.
If you don’t have sales of your products or services yet, by filing a trademark application, that filing date becomes your priority date throughout the United States.
For example, if you file a trademark application on November 1st, 2019, but ultimately don’t get the mark registered until December of 2020, your rights in the trademark will be retroactive to the filing date in November of 2019.
This can be incredibly important as you’re developing a brand because you can come up with the name, but it might take six to ten months to execute and bring a product or service to the market. With an intent-to-use application, you can file your application and ensure that nobody else takes that name, or a similar one.
2. You can get a government review of your trademark application to determine if the government thinks there’s any conflict before you even get your products or services out in the marketplace.
If you’ve got a little time, you can file the trademark application and actually get the government’s opinion on your trademark before you even come to market.
When you file a trademark application, it typically takes about four months to get the government to review your application. If you’re trying to bring something to market in 60 days, this strategy is not going to work. However, if you’re eight to ten months out, and you file a trademark application, in four months, you’ll know whether the government’s going to approve that application or not.
This review can be extremely beneficial because before you go out and invest millions of dollars in inventory with a particular name, you can know if the government itself is going to have a problem with your trademark.
3. You can reserve rights on your trademark in a broader scope of goods and services than you may initially intend to offer in the marketplace.
Let’s say initially you’re playing to offer a brand of cookies, right? We’ve got a name for it, but you’re thinking, “Hey, you know what, in a year or two, I might actually offer a brand of coffee. I might have other food products. I might even open an actual restaurant under this name.”
For example, if you are planning to launch a brand of cookies, and you hope to offer coffee products later on, intent-to-use applications could be helpful. In this case, you can make an initial trademark filing for what you’re currently selling, the cookies, but then file an Intent-to-use application for the coffee products. This will help to ensure nobody comes in and takes your trademark in a related or slightly unrelated field while you’re working to expand the brand going forward.
Keep in mind, trademarks can coexist across industries. For example, there’s Delta Faucets, and Delta Airlines. Dove Chocolate, and Dove Soap.
Just because you file a trademark for a brand of cookies, that doesn’t mean somebody wouldn’t be able to then make a clothing line with that brand name or open a restaurant. You may need to file additional trademark applications to cover a broader scope if you indeed intend to get into those different lines of businesses later on.
An Overview of the USPTO Process for Intent-to-Use Applications
Now that we know how these applications can be beneficial, let’s talk a little bit about how they actually change the application process with the USPTO.
I’ve had a lot of clients over the years think an intent-to-use application might be a bad thing, but it’s really not. It’s just as good as an in-use application in most cases. The only thing that’s really different about the process is when you get to the end. If you file an application based on an actual use in commerce, once it clears the government review process, the registration will just issue.
If you file based on an intent-to-use, once you clear the government registration process, you need to prove that you are now using the trademark in commerce. To do this, you’ll have to make an additional filing that does have an additional cost to finalize the registration. In our firm, the cost to make a statement-of-use or proof-of-use filing at the end of a trademark application process is typically $350 in legal fees and $100 in government fees per class of goods or services.
Often, I tell clients to think of intent-to-use applications as trademark insurance. If you’re going to spend an additional $450 on your trademark but get priority that lasts over the course of a year, think about how much money you’re saving than if somebody came in and took the trademark out from under you.
It’s not too expensive or too much of a hassle, but you get the benefit of the federal priority from the filing date of your intent-to-use filing.