What Is An Intent To Use Trademark Application?

A United States Patent and Trademark Office (USPTO) Intent to Use (ITU) trademark application is an attractive option for businesses planning to use a trademark in interstate commerce but have not yet begun to do so.  The Intent to Use trademark application is based on the applicant’s bona fide intention to use the trademark in the near future. This process allows trademark applicants to establish rights in a trademark before actual use in commerce, which is particularly useful for new products or services in development.

Filing and Processing an ITU Application

When filing an ITU application with the USPTO, the trademark applicant must submit a verified statement declaring a genuine intention to use the trademark commercially. The USPTO then conducts a preliminary examination to verify if the trademark qualifies for federal registration. If it passes this initial review, the application receives a filing date and the USPTO issues a Notice of Allowance. The applicant has six months from this notice to start using the trademark in commerce.

It should be noted that no state or US territory offers an Intent to Use application as an option for businesses that are still in the product or service planning stages.  State and US territories only offer Actual Use trademark applications, meaning that the product or service associated with the trademark must be available to customers or clients in the marketplace.

Demonstrating Use of the Trademark

To complete the federal trademark registration process, the applicant must provide the USPTO with a Statement of Use, accompanied by evidence showing the trademark’s actual commercial use. This includes demonstrating the trademark’s use in connection with the sale or transportation of goods or services across state lines. If the USPTO finds the provided statement and evidence satisfactory, it will register the trademark on the Principal Register, offering federal protection.

Extensions and Timeframes

The initial six-month period provided after the Notice of Allowance can be extended if the trademark has not yet been used in commerce. Applicants are allowed to request up to five six-month extensions, giving them a total of up to three years to begin using the trademark commercially. Each extension request requires a fee and a substantiated reason for the delay, maintaining the applicant’s bona fide intent to use the trademark.

Importance of Timely Action

Trademark applicants must adhere to these timelines. Failure to demonstrate use within the allowed timeframe, or to request necessary extensions, can result in the abandonment of the trademark application. Therefore, applicants must plan carefully and monitor their timelines to ensure they maintain their potential trademark rights through to registration.

This structured approach to securing trademark rights before actual use helps businesses protect their intellectual property effectively, aligning with strategic product launches and market entries.

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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