INTENT TO USE VERSUS ‘IN USE’?

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There are a number of factors a business owner must consider when plotting their trademark filing strategy.  Even after the perfect name, logo, and/or slogan has been created, you are then faced with the question of, “What type of trademark application do I file with the United States Patent and Trademark Office (USPTO)?” Although, in general, trademark rights are established by using the mark in commerce, depending on the timing of your business’ launch, an “Intent to Use” (ITU) application might be right for you. An ITU application filed under Section 1(b) of the Lanham Act can help you reserve rights so no one else “swoops in” at the last minute while you are preparing the launch of your brand. This article will explore the pros and cons to filing an ITU application to secure your U.S. trademark registration.

Jump to: Benefits of an Intent-to-Use // Risks of an Intent-to-Use

Benefits of Filing an Intent to Use Trademark Application

An ITU application allows you to reserve rights in a trademark while you prepare to launch your service. This is a powerful option for trademark holders, because it prevents competitors and third-parties from using a trademark while you are putting together the requirements for “commercial use.” In general, the benefits include:

Benefit #1: Secure Priority of your Trademark Rights Over Others

Oftentimes in a trademark dispute, who filed the trademark first will determine who wins the rights to the mark. Although trademark rights are typically associated with first use of the mark, filing an ITU application will allow you to obtain earlier rights. This means that once the registration is granted, the priority filing date (the date in which you can claim use of the mark) will revert to the filing date of the original ITU application. This allows your mark to enjoy an earlier priority date, if your mark is challenged by someone who claims to have used the trademark before you launched your brand.

For example, suppose Spacadets Inc. files an ITU application for the trademark ASTRO in November of 2017 for dehydrated ice cream. Meanwhile, later that same month, RuhRoh LLC launched its dehydrated desserts brand, ASTROHS, gaining customers all over the United States. Once Spacadets Inc. registers the ITU application, it will have “priority” over RuhRoh LLC, even those the second company was the “first to use” the trademark. It is significant advantage for Spacadets Inc. and will allow it to not only stop RuhRoh LLC from obtaining a federal trademark registration, but the company would also be in a good legal position to ask RuhRoh LLC to stop using the trademark.

Benefit #2: Put Others on Public Notice of Your Trademark and Deterrent Effect

Sometimes making your presence known to competitors and third-parties is half the battle. Once filed, a trademark application is made available to the public. By filing an ITU application, you are putting other potential applicants with similar marks on notice that you are in the process of preparing to use your trademark in commerce. Anyone who decides to use a similar trademark does so at their own risk.

Potential Drawbacks to Filing an Intent to Use Trademark Application

Although minor, additional filings and deadlines are points to consider when deciding whether an ITU application is the right option to register your trademark. Here are a few potential drawbacks to filing an ITU application to secure federal rights to your trademark:

Risk #1: Deadlines to Prove “Use in Commerce”

After receiving initial approval of your ITU application, you must be able to prove “use in commerce” within a certain time frame before the USPTO will issue a final registration for your trademark. You must be able to prove that the mark is being used in commerce within six months following the government’s initial approval of the mark, however, this deadline can be extended for up to three years to allow the applicant to prove use (assuming you can show good cause to need the extensions). Proving “use in commerce” of your mark is an important step in federally registering your trademark with an ITU application…see below:

Proving “Use in Commerce”- Ensure that all goods/services claimed in the ITU application are actually for sale, or have been sold.

Upon filing an ITU application, the USPTO requires a specific list of goods/services you plan to sell or provide. It may look something like this if you plan to sell cellphone accessories:

“International Class 09: USB cables; Battery chargers for use in vehicles; Carrying cases; Clear protective covers”

Following initial approval of your application, the USPTO requires an additional filing to prove “use in commerce” of the mark before it will grant final registration of the mark. When submitting “proof of use,” you are signing a sworn statement to the government that you are selling all the products listed in your application. For example, if you were submitting “proof of use” for the above list of goods, and you were only selling carrying cases, you would need to amend the application to remove the other products before submitting the “proof of use.” If you don’t, the resulting trademark registration could be cancelled for non-use (if it was just a mistake) or, even worse, you could be found to have fraudulently signed a sworn statement you knew (or should have known) wasn’t true.

Risk #2: Incur Additional Filing Fees and Potential Legal Fees

Although minimal, taking the additional step to prove “use in commerce” requires making an additional filing with the USPTO, which will incur additional government fees, and possibly additional legal fees (depending on your choice of counsel).

STATEMENT OF USE?

Did you already file an “intent to use” application and have questions about the “Notice of Allowance” or “Statement of Use”? Contact us!

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Knowing When to File an Intent to Use Application

There are a number of factors to consider when developing your trademark filing and brand strategy. Deciding what kind of application to file is just one piece of the puzzle.  If you are unsure about whether filing an ITU application is right for your trademark filing strategy, contact a trademark attorney who can give advice on which route to take.