Intent to Use Trademark Applications

Remember, a Trademark is a source identifier. It is a name, logo, and/or slogan that when attached to a good or service and is sold in commerce, anchors a company’s branding asset to a piece of merchandise/service. Critically, one cannot obtain a trademark unless the name/logo/slogan is used in conjunction with a good that it is actually being sold in commerce in a meaningful way. The USPTO refers to this sort of “Meaningful” sale as a “bonafide” sale and necessarily precludes mere “token” sales of goods/services. For example, I could not simply attach my company’s logo to the label of a t-shirt, sell this one t-shirt to a friend in California, and reasonably claim that the mark is now in “use in commerce.” What then can a Startup company do to protect its branding assets before the business starts making sales? Welcome to the Intent To Use (ITU) Application.

Section 1(b) of the Lanham Act, 15.U.S.C. § 1051(b) states that “…person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark.”

WHAT IS THE BENEFIT OF SUBMITTING AN INTENT TO USE TRADEMARK APPLICATION?

Simply, the ITU application provides trademark applicants (who have a real intent to use the mark) with a place-holder status on the desired trademark before the mark is actually “in use”. The applicant is effectively instructing the USPTO the following; “I fully intend to use this mark (name/logo/slogan) in commerce in the future but while I am not currently using the mark in commerce, I would like to make sure that no one else can use it for my goods/service while I am gearing up for launch.” Thus, the applicant receives the crucial benefit of an early priority date on the trademark without it having to actually exist in the marketplace. An early priority date is absolutely essential to the successful defense against a trademark opposition claim from a competitor with a sufficiently similar mark and is deemed “controlling” for purposes of determining priority for publication or issue (see TMEP §1208.01) and constructive use priority (see TMEP §201.02)

STEPS TO FILE/REGISTER AN INTENT TO USE TRADEMARK APPLICATION

1. Select a name, logo, slogan

2. Conduct a Trademark Eligibility Analysis to ensure the trademark is sufficiently distinct

3. Conduct a Trademark Search in the USPTO to vet potentially competing trademarks

4. Select a TEAS PLUS or TEAS STANDARD APPLICATION

5. Input the Trademark (name, logo, slogan) exactly

6. Select the Appropriate International Class given your Goods/Services

7. DESIGNATE THE FILING BASIS AS 1(B), INTENT-TO-USE

8. Monitor the Trademark Status Document Retrieval System for Office Actions

9. Respond to any Office Actions

10. Submit a Statement of Use upon receiving a Notice of Allowance (NOA)

11. File the appropriate maintenance documents to keep the trademark registration active

intent to use trademark applications

The Intent to Use Trademark Application Must Be Submitted In Good Faith

ITU Trademark Applications require a Bona Fide Intent to Use

The USPTO does not want to award the right to an exclusive trademark to an individual/company that does not actually plan on using that trademark. Indeed, trademark squatting is something the USPTO wants to avoid at all costs and therefore requires applicants of the ITU application to provide a sworn statement in the application that the applicant does, in fact, have a real and good faith intention of using the mark in commerce in the future. In the event that the verification is not filed at the time of the initial application’s submission, the subsequent verified statement must also include a statement that the applicant had at the time of the application filing date a bona fide intent to use the mark in commerce. While the sworn statement will only ever be scrutinized by the USPTO if it is clear from the application record that the statement is fraudulent (or at least contradictory), third-opposers may question the good faith of the applicant when taking legal action to prevent the registration of the trademark. Thus, please make sure to align your documentation and record-keeping with the dates supplied in the actual trademark application. In any request for an extension of time to file the statement of use, the applicant must also submit a verified statement of the applicant’s continued bona fide intent to use the mark in commerce. Applicants would be wise to keep track of the various operational and marketing efforts underway at the point of filing to later call upon, if necessary, and prove that such an honest and bona fide intention to use the mark existed at the time of filing. The USPTO, like all Government bodies and agencies, absolutely loves documentation so keep track of your work and expenses.

ITU Trademarks and the Use In Commerce Requirement

Use in Commerce – Here’s What it Means

Remember, it is not enough to simply come up with a clever name/logo/slogan – you must actually use this trademark in connection with the sale of goods/services in interstate commerce. However, “token” sales are not enough – while the USPTO has never come up with an exact number of sales required to satisfy the Use in Commerce requirement, it has made clear that the number of sales must be a meaningful amount.

Please speak with your New York Trademark Lawyer to discuss your particular situation.

When Must the Applicant Claim Use in Commerce?

Before the USPTO examing attorney allows your mark to be published in the Trademark Official Gazette (TMOG) – and therefore necessarily after the date of your applicant’s submission – the applicant is permitted to claim use in commerce and would simply need to file an Amendment to Allege use.
Once the ITU application is reviewed by the examining attorney and is issued a Notice of Allowance (NOA), the applicant may claim a use in commerce within the first six months of the NOA’s issue date. In order to claim the Use in Commerce, the applicant must file a Statement of Use.
In the event that the applicant does not file a Statement of Use within the designated 6 month period following the Notice fo Allowance (NOA), the applicant may request an extension of time and upon paying an additional Government filing fee, file the Statement of use.

If the SOU is not filed within the designated time period, the trademark will go abandoned

The USPTO really does care about timing – not following the statutory date designations will lead to your trademark application’s abandonment. Abandonment, in simplest terms, means that you will lose the rights otherwise conferred by the trademark and it will not register. Worse, the USPTO will not refund your initial filing fees. If the trademark does in fact go abandoned, the applicant will have 2 months to submit a Petition to Revive and explain the reason for missing the deadline.

PETITION TO REVIVE UNDER 37 C.F.R. §2.66

In the event that the applicant simply unintentionally did not provide the SOU within time, which is to say, accidentally, the applicant may petition to revive within 2 months of the issuance of the notice of abandonment/notice of the denial of the extension request/actual knowledge of the abandonment. Here, the applicant MUST declare that he/she did not receive the notice of abandonment from the USPTO and pay the appropriate fee.

PETITION FOR REINSTATEMENT UNDER 37 C.F.R §2.64

In the event that the applicant can provide evidence that the extension request actually did meet the requirements at the date of filing, the applicant can simply request that the USPTO Reinstate the trademark application within two months from the issue date of the denial of the extension request/notice of abandonment/actual knowledge of abandonment. Here, because the abandonment was seemingly the fault of the USPTO rather than the trademark applicant, there is no additional Government filing fee.

In the event that these Petitions To Revive are granted by the USPTO, the new Six Month period will commence from the date of the expiration of the preceding existing-six month period.

Intent to Use Collective Trademarks and Certification Trademarks

Trademark applications categorized as, collective trademarks, collective membership trademarks, collective service trademarks, and/or certification trademarks that are filed under the Intent-to-Use 1(b) classification, the verified statement must also indicate that the applicant not only has a bona fide intention to use the mark in commerce but is also within his/her rights to “exercise legitimate control” over the use of the mark. Similarly, a verified statement of the applicant’s continued bona fide intention to use the mark and “exercise legitimate control” over the mark should be present in any extension of time request to file the SOU.

HOW TO FILE AN SOU EXTENSION REQUEST FOR THE INTENT TO USE TRADEMARK APPLICATION

As we have noted, Intent to Use trademark applications can only “mature” into full trademark registrations once the original trademark application receives a Notice of Allowance (from the USPTO) and the applicant, in turn, submits a statement of use along with a specimen of said use to the trademark examiner for review.

However, if the applicant has still used the mark in commerce within the initial six month period following the issuance of the Notice of Allowance, the applicant may file an extension request. To file an extension request, the applicant must submit the request BEFORE the six months are up and submit the request fee of $125.00/CL along with a verified statement of the Applicant’s continued bona fide intention to use the mark in commerce.

The USPTO recognizes that six months may very well not be enough time for emerging companies to have made “bona fide” sales in interstate commerce and therefore, a trademark applicant can file a total of 5 extension requests, or 36 months from the date the NOA was issued by the USPTO. Please note, each extension request must also contain a statement and indication verifying that the applicant has “good cause” to file the extension request and document the efforts being made to actually use the mark in commerce (hiring a manufacturer, developing an e-commerce website, onboarding a sales team etc.).