Should I file an in-use or intent-to-use trademark application?
When you file a trademark application with the United States Patent & Trademark Office (USPTO), you will be asked whether your mark is in-use or do you have the intent-to-use. To understand the difference let’s go a little into the background of trademarks.
Regulations governing when and how we can use trademarks stem from common law. A trademark is an identifying sign/symbol/word that a business used to distinguish its goods or services from other competing businesses offering similar goods or services in the marketplace. The trademark therefore falls under the category of intellectual property (IP). Under common law a business has IP rights when conducting trade.
Why does this matter? It is important to remember that the USPTO or state trademark agency only register trademarks as a formal acknowledgement of the owner’s IP rights. These states agencies do not establish the trademark. Instead, it is the owner’s creation and use of the trademark that establish the owner’s right to trademark. This is important because it is the businesses exercise of their rights to trademark and use of that right in commerce which gives government agencies the jurisdiction over trademark matters. The federal government has the express authority to regulate trade between states, while States have the authority to regulate trade within each state. The United States Department of Commerce designates the USPTO with the responsibility of maintain federal trademark registrations.
Trademark Intent to Use vs In Use
To register a trademark, the mark must either be currently intended to be used or in use in commerce. Let’s go over the difference.
“Intent to Use”
Have to used your trademark or service mark in commerce yet? If the answer is no, then don’t lose heart. The United States Patent and Trademark Office (USPTO) still allows you to register a trademark if you intend on using it. The requirement for this application is that you have a good faith intention to do so in the future. This application is considered an intent-to-use (ITU) filing basis. One advantage of an ITU filing basis is that you can get an earlier application filing date than a possible competitor, which would give your mark priority over someone else’s if a legal conflict develops.
In order to succeed with an intent-to-use application, the owner must show actual use of their mark in commerce by filing documents and paying additional fees within certain time frames before your mark may register. In your application you must show that you have a good faith (bona fide) intention to use the mark in commerce. A competitor can question your good faith intention by taking legal action in an attempt prevent your mark from be registering. That is why it is also a good idea to document your efforts to start your business involving the goods and services listed in your application. Evidence such as documenting your research or development of products or services, market research, steps to acquire distributors or obtain government approval, all establish your intent to use the mark in commerce. Just make sure that the dates in your documentation coincide with the date you filed your application.
In your ITU application you must file a form called the “Allegation of Use.” This is a sworn statement attesting to the use of the mark in commerce and a specimen of use in the future for an additional fee. This Allegation of Use with specimen must be filed either:
1) on or before the day that the USPTO examining attorney approves the mark for publication; OR
2) on or after the day the USPTO issues the Notice of Allowance (usually about twelve weeks after the date the mark is published).
The applicant must submit a Statement of Use with specimen within 6 months of the Notice of Allowance, or request a six-month extension of time. It is important to note, if you are not yet using your mark you have two options: Either you can wait to file your application until you put the mark into use or you can file an application on the grounds that you intend to use it within six months of the date the mark is approved for registration by the USPTO. If you are permitted to file the application ahead of time, but you are unable to put the mark into use within those six months intended to use period, then you can purchase additional extensions. With this extension request you must pay a fee and submit a verified statement of your continued bona fide intent to use your mark in commerce. You can file a total of five extension requests. However, extensions 2 through 5 will require a showing of good cause which is a statement of your ongoing efforts to make use of your mark.
“In Use” also known as Use in Commerce (UIC)
Have to used your trademark or service mark in commerce yet? If the answer is yes, then you may file an application on the basis of “use.” Again, in use means you are using your trademark in the selling or transporting of your goods or services out of state. For example, you might manufacture auto parts in Ohio and sell it to car dealerships in Michigan. Or you might provide IT services from your office in Texas to customer is California’s Silicon Valley.
Just like with applications with an ITU filing basis, the UIC filing basis requires you provide evidence that you’re using the trademark in commerce. You will need to submit a specimen showing how you use your trademark. You will also have to provide the dates when you first used your trademark anywhere and when you first used it in commerce. Then you will need to attest that all of the above information is true and correct via an affidavit or signed declaration.
And that is where our law office comes in. If you have any questions on how to file a trademark application where it is on an in-use or intent-to-use basis we have you covered. If you have any questions we are here to help.