by Sheren Javdan
August 26, 2014
An intent-to-use trademark application should be used when you want to immediately register a trademark but do not have your trademark specimen available yet. An intent-to-use trademark application provides a window of time to provide the information necessary to complete the registration. Intent-to-use applications are especially important when attempting to achieve quick trademark protection.
RELATED: What is a Trademark Specimen?
Intent-To-Use Trademark Application vs. Actual Use Trademark Application
There are two processes through which an applicant can receive rights to a trademark. The first, more commonly used, process is through filing an “actual use” application. An actual use application is filed by an applicant who is actively using their trademark in the marketplace. Applicants who have already used their trademark or service mark in commerce may file for trademark protection under the actual use basis.
An intent-to-use trademark application is filed instead of an actual use application by an applicant who has a good faith intent to use a trademark or service mark in commerce at a future time.
What is Good Faith Intent?
Applicants who have not yet used their trademark or service mark in commerce but have a good faith, also known as bona fide, intent to do so may file an intent-to-use trademark application with the United States Patent and Trademark Office (USPTO).
§1101 of the Trademark Manual of Examining Procedure states that “a verified statement of the applicant’s bona fide intention to use the mark in commerce must be included in the intent-to-use trademark applications.” Therefore, applicants may simply include a sworn statement in their applications stating that they intend to use the mark in commerce. However, it is highly recommended that applicants strengthen their applications by including documents such as business plans, contracts, internal reports or even sample products that show the mark in use.
Once an intent-to-use trademark application is filed with the USPTO, applicants must file an allegation of use application to obtain their trademark registration.
Allegation of Use
Trademark registration cannot be granted to applicants until he or she has filed an allegation of use that includes the date of first use and a specimen of use of each class the goods or services have been registered in.
An allegation of use can be filed one of two ways through either an amendment to allege use or a statement of use. The major difference between the two is when the documents are filed.
Applicants who receive a notice of allowance either because they have not properly filed an amendment to allege use or filed an amendment to allege use and later withdrew it, must file a statement of use.
A statement of use can only be filed after an applicant makes actual use of the trademark or service mark in commerce. The statement of use must be filed within 6 months of the date of issuance on the notice or request an extension.
Before an amendment to allege use or statement of use is submitted to an attorney for examination, an applicant must confirm it contains the following elements; the prescribed fee for at least one class, a specimen or facsimile of the mark as used in commerce and a verification or declaration signed by the applicant or a person properly authorized to sign on behalf of the applicant that the mark is in use in commerce.
Filing an Extension
The statement of use must be filed within 6 months of the notice’s date of issuance or an applicant may request an extension for 6 months. Applicants may request an addition four 6 month extensions totaling 36 months.
Applicants capable of showing “good cause” as to why they have not yet used the mark in commerce may receive an extension.
Advantages of an Intent-To-Use Trademark Application
A major advantage to filing an intent-to-use trademark application is obtaining a retroactive date of first use. That is, the official date noted on the trademark registration will be the date of the intent-to-use. This becomes important when a conflict arises when another individual infringes on your trademark rights.
Applicants who file intent-to-use trademark applications will begin enjoying the benefits of trademark protection and receive nationwide priority surrounding their trademark or service mark before individuals who opt out of applying for an intent-to-use status.
Contact your local trademark attorney or LawInc.com to help you get your trademark protected.