When Can (and Should) You File an “Intent to Use” Trademark Registration Application?

For many new companies, registering a trademark with the U.S. Patent and Trademark Office (USPTO) is their first foray into the world of intellectual property (IP) protection. For many established companies, filing trademark registration applications early and often is a core component of a broader IP protection strategy. In both scenarios, the “intent to use” trademark registration application is a valuable tool for locking down exclusive rights. Learn more from an experienced Florida trademark attorney:

What is an “Intent to Use” Trademark Registration Application?

Traditionally, federal law only allowed companies to register trademarks that they were already using in commerce.  This changed when the USPTO began accepting “intent to use” trademark registration applications in 1989. As its name suggests, the “intent to use” application (or “ITU” application) allows companies to apply to register trademarks that they haven’t yet released publicly but that they intend to start using on their products or services in the future.

The ability to file an ITU application is important for a couple of reasons. First, it allows companies to apply for protection before they invest a substantial amount of money in a marketing campaign under their chosen trademark. Second, while geographically limited trademark rights arise automatically upon use, registration with the USPTO is necessary to secure nationwide protection. As a result, if companies wait until after they have begun using their trademarks to file for registration with the USPTO, they risk having other companies come in and secure competing rights in the interim—and potentially wasting their investment in a trademark that they cannot use nationwide.

When Can You File an “Intent to Use” Trademark Registration Application?

So, when can companies file “intent to use” trademark registration applications with the USPTO? As the USPTO explains, “[i]f you haven’t used your mark in commerce yet, but have a good faith intention to do so in the future, you can file an application to register your trademark or service mark with an intent-to-use (ITU) filing basis.” The key here is a good-faith (or “bona fide”) intent to use. Companies cannot “park” trademarks that they may or may not want to use in the future, and they cannot register trademarks solely for the purpose of preventing use by others.

As the USPTO’s Trademark Manual of Examining Procedure (TMEP) further explains:

“Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), provides that an applicant may file an application based on a bona fide intention to use a mark in commerce ‘under circumstances showing the good faith of such person.’ A verified statement of the applicant’s bona fide intention to use the mark in commerce must be included in intent-to-use (“ITU”) applications under §1(b) . . . .”

While the USPTO makes only limited scrutiny of ITU applicants’ claims of bona fide intent to use, competitors can raise this issue when challenging both pending and approved ITU registration applications. As a result, this is an issue that requires careful consideration, and it is one of several considerations that companies need to consider before beginning the ITU application process.

It is also important to note that unlike filing a trademark registration application based on actual use in commerce, filing an “intent to use” trademark registration application is a two-step process. After filing the initial ITU application, applicants must separately file an Amendment to Allege Use or a Statement of Use with the USPTO. Failure to make this second filing in time will result in an ITU application being deemed abandoned.

Considerations Before Filing an “Intent to Use” Application with the USPTO

Let’s say you are considering an ITU trademark registration application. What do you need to consider before you file? Some of the key considerations include:

1. Is Your Chosen Trademark Available for Registration in the U.S.?

To be eligible for registration with the USPTO, a trademark must not be “confusingly similar” to any trademark that is already registered (or subject to a prior valid ITU registration application). This means that conducting comprehensive “clearance” research is critical.

Conducting comprehensive trademark clearance research involves obtaining a search report from a reputable vendor and then examining the contents of the report for any potential concerns. Oftentimes, it will make sense to conduct a brief “knockout search” before ordering a search report to ensure that ordering a report is worthwhile. Since assessing potential concerns requires an in-depth understanding of federal trademark law, this is a step that requires the involvement of experienced legal counsel.

2. Do You Have (and Can You Demonstrate) Bona Fide Intent to Use?

Before filing an ITU registration application, it is also important to ensure that you have (and can demonstrate) a bona fide intent to use. In the event that a competitor or another third party challenges your company’s ITU application with the USPTO, having documentation on hand from the time of filing could be essential for overcoming any allegations of a lack of bona fide intent.

3. Will You Be Able to File a Statement of Use in Time?

If your company begins using its trademark while its ITU application is pending, you will be able to file an Amendment to Allege Use prior to receiving the USPTO’s approval. Otherwise, the USPTO will issue a conditional approval in the form of a Notice of Allowance, and this will start the clock ticking for your company to file a Statement of Use.

After the USPTO issues a Notice of Allowance, an applicant has six months to file a Statement of Use. Applicants can request up to a total of five six-month extensions—meaning that they have a maximum of three years from the issuance of a Notice of Allowance to begin using their trademarks in commerce.

Discuss Your Company’s “Intent to Use” Application with a Florida Trademark Attorney at Lott & Fischer, PL

Do you have questions about filing an “intent to use” trademark registration application with the USPTO? If so, we invite you to get in touch. Call 305-448-7089 or contact us online to schedule an appointment with a Florida trademark attorney at Lott & Fischer, PL today.