GETTING YOUR TRADEMARK FILED: INTENT-TO-USE VS. ACTUAL USE

If you're doing business in the US and want to acquire a trademark registration, there are two main types of applications that you can file.

  • Use-based application: A use-based application is appropriate when you are already using the mark in commerce. The process includes (1) filing an application that states the date that you first used it in commerce and (2) providing an example of that use. This shows the United States Patent and Trademark Office (USPTO) that you deserve registered trademark protection.

  • Intent-to-use application: The other type of trademark application deals with intending to release a product or service using the mark at some point in the future.

Trademark Examining Attorneys evaluate intent-to-use applications and use-based applications in the same way-by determining whether or not there are other marks on the register that could be confusingly similar to the mark that you have applied for, whether or not the mark is descriptive of the goods and services in question, etc. Both filings also provide for a priority filing date with the USPTO.

For a use-based application, once your application is cleared, and it moves through the prosecution process, a registration will issue. With intent-to-use applications, because you have not yet shown use, you will receive a Notice of Allowance instead of a registration. That means anyone who files an application after your filing date will be junior to you, which in turn means you will have priority over them for all matters involving intellectual property rights. But you don't have a registration just yet.

Once you have a Notice of Allowance in hand, you have to file what is called a "Statement of Use" within 6 months of the notice issuing. This statement requires you to provide an example of your use of the mark in commerce with the covered goods and/or services. It also requires the applicant to specify the date the mark was first used. Then, once the Statement of Use is accepted, a registration will issue. The only downside of an intent-to-use application is the USPTO charges a fee to file the Statement of Use.

What happens if you're not using the trademark 6 months after receiving your Notice of Allowance?

Applicants have up five 6-month extensions possibly available, but it is incumbent on the applicant to request these extensions from the USPTO. This allows you to keep your intent-to-use application "alive" for up to 3 years after receiving your Notice of Allowance. As long as you can show that you are actively working on research and development, developing your marketing, or preparing the product or service for launch, the USPTO will generally grant your extension applications.

Whether you have a small or large company, if you have plans to offer new products or seek further coverage on the services that you already offer, an intent-to-use application can get you to the front of the filing line and maintain your options for a good period of time. You can file an intent-to-use application that includes all the other products that you plan to release, and you will then be able to secure registration for them as soon as you are ready to move forward.

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