What Is An Actual Use Trademark Application?

An Actual Use trademark application is submitted to the United States Patent and Trademark Office (USPTO) when an applicant has already commenced using a trademark in commerce. This application is crucial for businesses that have begun marketing their products or services under a specific trademark and are seeking to secure the trademark protections that registration provides.

Filing Requirements for an Actual Use Application

To file an Actual Use trademark application, a trademark applicant needs to provide comprehensive details about the trademark and its use:

  • The Trademark: A complete description of the trademark must be submitted, including any logos or design elements. This helps in distinguishing the trademark from others in the marketplace.
  • Goods or Services: The application must clearly specify the types of goods or services the trademark is used with. These descriptions should align with the classifications found in the USPTO’s Trademark ID Manual, ensuring that the trademark’s use is categorized correctly.
  • Evidence of Use: Crucially, the applicant must demonstrate actual use of the trademark in commerce. This includes providing the date of first use, how the trademark has been used, and the geographical extent of its use. Specimens of use, such as photographs of the trademark on packaging, advertisements, or actual products, are required to substantiate these claims.

Review and Registration Process

Once filed, the Actual Use trademark application undergoes a rigorous review by the USPTO. This examination ensures that the trademark meets all legal standards for registration. Key considerations include:

If the trademark application is approved, the trademark is registered on the USPTO’s Principal Register. This registration confers significant benefits, including the exclusive right to use the trademark nationwide in connection with the listed goods or services. The registrant also receives a certificate of trademark registration, affirming their ownership and exclusive rights.

Protection and Enforcement

With registration, the owner of an Actual Use trademark gains the ability to enforce their trademark rights across the United States. This includes the authority to pursue legal action against any unauthorized use that might cause confusion among consumers, thereby protecting the brand and its reputation in the market.

In summary, the Actual Use trademark application is essential for businesses actively using a trademark. It not only establishes the validity of the trademark but also secures the registrant’s exclusive rights to use it commercially throughout the United States. This process is fundamental in safeguarding a business’s branding and commercial identity against infringement and misuse.

What Are The Differences Between The Intent To Use and Actual Use Trademark Applications?

The primary differences between an Intent to Use (ITU) trademark application and an Actual Use trademark application filed with the United States Patent and Trademark Office (USPTO) lie in the timing and proof of use associated with the trademark in commerce. Here’s a breakdown of these key differences:

Timing of Trademark Use: Intent to Use (ITU) Application: This is filed when the applicant has not yet used the trademark in commerce but plans to do so in the future. The ITU application is based on a bona fide intention to start using the trademark in commerce within a certain timeframe. It allows applicants to claim rights to a trademark before actual use, helping to secure a mark in a competitive business environment.
Actual Use Application: In contrast, this application is filed when the trademark has already been used in commerce. The applicant must provide evidence of this use as part of the application process. An Actual Use application is appropriate for businesses that have already launched their products or services under the trademark and can demonstrate this usage through concrete examples.

Evidence Required: Intent to Use Application: At the time of application, no evidence of use is required. However, after the USPTO issues a Notice of Allowance following the initial approval of the mark, the applicant must submit a Statement of Use (SOU), which includes evidence showing the trademark in use. This must be done within six months of the notice, although extensions can be requested.
Actual Use Application: Evidence of use must be submitted at the time of application. This includes specimens showing the trademark as used in commerce, such as on product packaging, in advertisements, or on the products themselves. The date of first use in commerce and the date of first use anywhere must also be provided.

Application Process and Review: Intent to Use Application: After filing, the application is examined, and if it meets initial criteria, the USPTO issues a Notice of Allowance. The trademark cannot proceed to registration until the SOU is accepted, confirming the trademark is in use as stated.
Actual Use Application: The review process involves an examination of both the inherent registrability of the trademark and the provided specimens of use. If the trademark meets all criteria, it proceeds directly to registration without the intermediate step of a Notice of Allowance.

Strategic Considerations: Intent to Use Application: Useful for businesses that are in the planning stages but wish to secure trademark rights early. It is particularly beneficial in industries where trademarks are competitive and securing a particular mark early can provide a significant advantage.
Actual Use Application: Best suited for businesses that have already launched their product or service and can readily provide proof of trademark use. This can lead to a quicker path to registration since no future proof of use is required after filing.

In summary, the choice between an ITU and an Actual Use application depends largely on whether the trademark has already been used in commerce. Each type of application serves different business needs and timing considerations in the trademark registration process.

Contact Our Charleston Trademark Attorneys

Are you launching a new company or developing a new brand or product and need to clear and/or register a trademark? Are you an online seller enrolling in a brand registry program, such as Amazon Brand Registry? Are you looking for help with another state or federal trademark matter? We can assist! We invite you to contact our law firm by giving us a call or completing our online contact form.  We make every effort to respond to all inquiries within one business day.


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