Intent-to-use Trademark Applications

Federal trademark rights and registration are ultimately based on actual usage in commerce - particularly, commerce which can be regulated by the U.S. Congress. Registration of a trademark is not required for these rights to accrue, but because it is a public and semi-adversarial process, is the best means of making sure that any given trademark does not infringe another one. But, the trademark registration process can take months, or even years, to complete. How does one introduce a new business name, or product or service, into the marketplace with any confidence that it will not infringe an existing trademark?

Enter the intent-to-use application, which allows anyone to obtain federal clearance and approval for registration of a trademark before committing to all of the costs of marketing and promoting the mark. That is, an intent-to-use application permits one to go through the entire examination and clearance procedure of federal registration, but without having to show actual use in commerce.

The catch is that an applicant who files an intent-to-use application must make actual use of the mark in commerce before the mark can be registered. In other words, what you get after an intent-to-use application has successfully made its way through the Trademark Office is a Notice of Allowance, rather than a certificate of registration. However, the Notice of Allowance operates to assure registration once actual use in commerce has begun and the additional filing requirements have been met. After use in commerce begins, the applicant must submit the following additional materials:

• three specimens evidencing actual use in regulated commerce;
• an additional fee per class of goods or services in the application; and
• either (1) an Amendment to Allege Use if the application has not yet been approved for publication or (2) a Statement of Use if the mark has been published and the PTO has issued a Notice of Allowance.

If the applicant will not make use of the mark in commerce within six months of the Notice of Allowance, the applicant must file a Request for an Extension of Time to File a Statement of Use, or the application is considered abandoned.

Whether it is more advantageous to file an intent-to-use application or an application based on use in commerce will depend on the costs involved in initial marketing of the trademark, the availability of specimens, and how soon marketplace introduction is desired.