Intent-to-Use Trademark Applications

If you are like most entrepreneurs, you have probably spent a lot of time thinking of the perfect name for your company, and even more time developing a great looking logo and brand identity. Your initial product may have a different name – something unique and catchy that communicates perfectly to consumers and potential investors alike exactly what it does. You know that you should file applications to register your trademarks, but you are still some months away from launch, and you know that under U.S. law, in order to get a federal trademark registration, you must swear to and demonstrate use of your mark in commerce. How can you protect your marks to ensure that you will have the right to use them when it is time to launch?

The U.S. Patent and Trademark Office offers an option to file an application for registration of a trademark on the basis that you have a bona fide intent-to-use the mark in commerce. This type of application is commonly referred to as an “intent-to-use,” “ITU” or “1(b)” application. It allows an applicant to proceed through the application process without demonstrating use of the mark in commerce until a later date. At the end of the prosecution phase, the application, if successful, is allowed — meaning that the mark will be eligible for registration once proof of use in commerce is submitted.

The advantage of this approach is that it allows the applicant to get the filing date of the application as their priority date — the date of first use in commerce. Under U.S. law, the first person to use a mark has the legal rights to that mark. In the context of an ITU application, as long as the applicant appropriately demonstrates use in commerce, and the mark proceeds to registration, the filing date of the application serves as the constructive priority date even though the applicant has not yet commenced use of the mark in commerce. In other words, by filing an ITU application, your federal trademark rights date back to the date you filed the application, not the date you actually start using the mark in commerce.

Why is this important? Well, for starters, it allows you to start hyping your product — getting a pre-launch media buzz going — without the risk that someone might swoop in and steal the rights to your brand out from under you, causing you a major headache.

What is the downside to filing an ITU? You have to start using the mark within six months of the Notice of Allowance (and make a filing demonstrating such use), or file for an extension. There are fees associated with these filings. The Statement of Use or Amendment to Allege Use currently costs $100.00 per class and a Request for Extension of Time for Filing a Statement of Use costs $150 per class. This makes an ITU application slightly more expensive than a regular use-based trademark application. You also can only file a maximum of five Requests for Extension of Time for Filing a Statement of Use, meaning that you must commence use of the mark within three years of the Notice of Allowance.

On balance, the ITU application is a very useful tool to protect your Intellectual Property (IP) rights as early as possible, and ensures you have the right to use your carefully developed brands and trademarks. If you are committed to a name for your product, we suggest that you clear and file trademark applications as early as possible — the extra cost of an ITU application pales in comparison to the cost of rebranding a product just before launch!

SalmonLaw can help you identify your IP, and develop a cost-effective strategy to protect your IP assets. Contact Sarah C. Hsia, Intellectual Property Counsel at SalmonLaw, with any questions or for more information on how to get started identifying and protecting your IP, by clicking here.