Intent to Use Trademark

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Intent to Use Trademark

In 1989 the U.S. Patent and Trademark Office began to allow Intent to Use (ITU) trademark applications.  Prior to that time use in commerce was a prerequisite to filing a trademark application.  However, it is no longer necessary to utilize a trademark in commerce to acquire rights.

What is an Intent to Use Trademark?

When the Trademark Law Revision Act of 1988 went into effect, Intent to Use trademark applications were finally accepted. The United States Patent and Trademark Office (USPTO) began allowing applications as long as there was a bona fide intent from the applicant to use the trademark in commerce. This resulted in a nearly 35 percent increase in registration requests between 1989 and 1990.

It may seem difficult to prove a good faith intent to use a trademark in commerce, but the USPTO doesn’t make this burdensome. As long as you include a sworn statement in your application, you’ll have provided sufficient evidence that you plan on using your trademark commercially. In the event of a dispute however, you should have some written plans as evidence to prove that you truly had plans to use the trademark.  There are several benefits of an Intent to Use trademark. Here are just a few:

  • Getting an earlier filing date and perhaps a jump on competitors.
  • Potential avoidance of trademark infringement claims since actual use has not begun.
  • Discover if trademark is considered generic or descriptive prior to use.
  • Puts public on notice of your intent to use a specific trademark in commerce.

Filing an Intent to Use trademark application will not result in registration on its own. It will get the process started so you can go through an examining attorney and the Official Gazette, but you’ll still need to prove actual use prior to receiving full federal protection.

Intent to Use Trademark Application Process

The initial steps of the Intent to Use trademark application process are very similar to the normal registration procedure. An intent to use application does not require a specimen of use or dates of first use.

The Intent to Use trademark application process proceeds as follows:

  • The application is forwarded to examining attorney if it meets all filing requirements.
  • The Examining attorney reviews your desired trademark to see if it conflicts with other trademarks.
  • If the trademark is registerable, it is published in the Official Gazette for 30-day opposition period.
  • Notice of Allowance is issued if there is no opposition to registration.
  • A Statement of Use (SOU) or request for extension is filed.
  • Once actual use is proven, the registration issues.

This is the typical procedure for filing an Intent to Use trademark application, but there are other times during the process when you can also file your specimen of use as evidence of actual use. Once you have received your Notice of Allowance, you can submit a Statement of Use or extension request. Prior to publication, however, you can file an Amendment to Allege Use and provide specimens of use. You cannot submit evidence after publication until the Notice of Allowance is issued.

The important thing to remember is to respond to all USPTO correspondence in a timely manner. Every step along the way has important deadlines, and failure to abide by them will result in trademark abandonment.

Intent to Use Trademark Application

It’s smart to review the Intent to Use trademark application prior to beginning the process. This is the exact same application you would file if your trademark was already being used in commerce. If you scroll down to the Basis for Filing section, however, you’ll see options for actual use and intent to use.

To provide a Statement of Use or Amendment to Allege Use, click here for the online form. The Request for an Extension of Time can be found here.  While the entire trademark search and trademark application process can be completed by anyone on their own, we highly recommend that you hire a trademark attorney to handle the process for you.

Intent to Use Trademark Timeline

Registering a trademark typically takes anywhere from six months to a year. Due to the additional requirements when you don’t have evidentiary specimens to submit, however, the Intent to Use trademark timeline will take longer if you don’t have your specimen of use. Even if everything goes smoothly during this process, you can expect to wait seven months from the time of filing to receive your Notice of Allowance. It takes at least an additional two months after you submit a Statement of Use to receive registration.

Here is a timeline of what you can expect:

  • Day 1: You file your Intent of Use trademark.
  • 3 Months after filing: Your application is assigned to a USPTO examining attorney.
  • 1 Month after assignment: Trademark is approved and published for opposition or an office action issues.
  • 3 Months after publishing: If an intent to use application, a Notice of Allowance issues.
  • 6 Month deadline: For intent to use applications, a Statement of Use or request for extension must be submitted within six months.
  • 1 Month after filing SOU: The USPTO reviews your submitted specimens.
  • 3 Months later: Application registers.

If you receive an office action from the examining attorney, you have six months to respond. If they receive your response and approve, it usually takes about two months before being published in the Official Gazette. The remaining Intent to Use trademark timeline depends on whether or not you file extensions.

Intent to Use Trademark Application Fee

In addition to the initial application fee which is typically $225 per class, there are costs related to submitting your Statement of Use and requesting extensions.  Once you submit an Amendment to Allege Use or Statement of Use, you’ll need to include an additional $100 per class of goods or services included in your initial application. If you choose to file an extension – each of which will provide an additional six months – you’ll need to pay $125 in additional fees per class.

There are some nuances to these rules. For instance, you can submit a Request to Divide. If you’ve established evidence of sufficient use in commerce for one class in an application but not the others, you can split the application into different applications. This allows your trademark registration to be approved in a timelier manner, but there’s also a fee of $100 for every new application created.

Assignment of Intent to Use Trademark Application

There are special rules when it comes to assignment of Intent to Use Trademark applications.  Whereas trademark owners and individuals with use-based applications can assign their rights at any time, this isn’t the case with Intent to Use trademark applications. This is because the USPTO is very strict regarding potential reserving and warehousing of intellectual property. Because of this, if possible it is best to wait to assign the trademark until after it registers.

Before actual use is proven, Intent to Use trademark ownership can only be assigned to a successor of the entire business. Additionally, the company must currently exist and be conducting ongoing activities. To begin such a transfer, those involved need to first sign an agreement between the parties laying out the terms of the deal.

Afterwards, this document must be submitted, along with a Recordation Cover Sheet, to the Assignment Recordation Branch. Assignments aren’t typically investigated, so an examining attorney will only issue an inquiry in rare instances.  Although assignments aren’t thoroughly investigated by the USPTO, it’s important that you don’t attempt to sidestep rules. If you ever end up facing trademark litigation, the defendant could get the trademark cancelled by showing that you violated anti-assignment provisions.

Contact Us

If you have an intent to use trademark issue, please contact us for assistance.

 

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