Should You File An Intent-to-Use Trademark Application?

Trademark Law0 comments

There are 2 main types of federal trademark registration applications:

  • In Use: you would file for this when you’re actively using your mark in commerce at the time you apply (you just have to submit a specimen with your application that demonstrates use).
  • Intent To Use (ITU): you would file this way if you have NOT started using your mark in commerce but intend to use it in the future, allowing you to essentially “reserve” your mark (NOTE – there’s an extra step here which we’ll get into in a moment).

A case for intent-to-use trademark applications

Right about now, you might be wondering why you’d choose to file an intent-to-use application if it creates more work for you.

And I have a horror story to answer that legitimate question for you…

We’re more active and transparent on social media now than ever before, sometimes being entirely too trusting about what we share. ⠀⠀⠀⠀⠀⠀⠀⠀⠀

It’s easy to forget that some members of your audience may not have the best intentions.⠀⠀⠀⠀⠀⠀⠀⠀⠀⠀⠀⠀⠀⠀⠀

So, when an online business owner I know of shared their intent to use a mark before they actually filed an intent-to-use trademark application, they learned exactly why you’d choose to take the extra steps to do so.⠀⠀⠀⠀⠀⠀⠀⠀⠀

Someone in their audience actually copied the mark verbatim, applied for trademark registration, and got an ‘in use’ date first.⠀⠀⠀⠀⠀⠀⠀⠀⠀

I NEVER want to see this happen to you.⠀⠀

Let’s talk about how you can make sure it doesn’t.

**Real quick, first: this post is legal education and information. It’s not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

The extra step to filing an intent-to-use trademark application 

Now that you have a compelling reason to file an intent-to-use trademark application, this extra step won’t seem like much.

When you file before you’re actively using your trademark in commerce, you don’t have to worry about submitting a specimen with your original application that proves the use of your mark.

What you DO have to consider is that your mark is only “reserved” for 6 months*.

You have to file an additional document – a Statement of Use – with a specimen demonstrating your use of the mark within 6 months* of receipt of a Notice of Allowance.

Once you do that, your mark can officially reach registration status (and you can use that coveted little ® to prove it).

*Note: you can request up to 5 extensions so that 6 months could actually be 36 months (3 years) to use the mark in commerce and file your Statement of Use after the Notice of Allowance issuance date. 

What “in use” in commerce actually means⠀⠀

All this talk about specimens and proving your mark is “in use” deserves an explanation.

Section 45 of the Lanham Act defines “use in commerce” as “Bona Fide Use of a trademark in the ordinary course of trade.” 

Great. But what does that mean?

It actually means different things depending on what your mark will be used for. 

If your application is for goods, then:

  1. Your mark is on the products, product packaging, labels or tags affixed to the products, and/or documents that are distributed with the products (think instruction manuals and invoices), 

AND

  1. Your products have actually been sold or transported within the United States.

If your application is for services, then:

  1. Your mark is used in advertisements (like brochures, radio ads, television commercials, and/or on websites) that promote your services, 

AND

  1. Your services have actually been rendered in the United States.

Plus (most of the time), your goods or services have to cross state lines. 

This is because you can only seek federal registration of your trademarks if you’re involved in commerce that’s regulated by Congress, aka federal law. (And this is thanks to the Lanham Act and the Interstate Commerce Clause.)

Benefits of filing an intent-to-use trademark application

The biggest benefit is that you get to avoid the absolutely gut-wrenching moment when someone takes your mark and registers it first. 

By filing early, you get the benefit of “constructive use and secure priority.”

Let’s say you file an intent to use trademark application in January but don’t actually start using the mark in commerce until May. 

(Which, as you now know, is fine. You still have time in your 6-month window to file that Statement of Use specimen you need for federal registration.)

If a third party starts using a confusingly similar mark for similar goods or services in March – after your filing date but before you start using the mark in commerce – YOU have priority because your January filing date predates their March use.

An intent-to-use application puts your competitors, potential infringers, and copycats on notice that you are going to be using a mark in commerce, and their use of any confusingly similar mark is done at their risk.

Not yours. 

Filing your trademark for intent-to-use is a CEO move

By choosing to file early, you’re taking your brand seriously. 

Rather than hoping your mark is still available by the time you make it through the extensive startup process, you’re taking control of the situation and ensuring your mark is yours to claim when you’re ready. 

And not trusting your brand to fate is just smart business ownership.

Make that CEO move and book your trademark consultation today. 

 

I’m Nicole.

I understand both the legal world and the online business world and can bridge the gap for entrepreneurs that want to ensure all of their ducks are in a nice, neat row. Let’s protect your business so you can build your empire.