What is an Intent to Use Trademark Application?

 

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.”

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. Trademark Registration can be easy with a Top Trademark Lawyer.

How Do I File an Intent to Use Trademark Application?

 

After the applicant has listed the Goods/Services in the Trademark Application, there will be an opportunity to designate the Intent to Use option.

 

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. 
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?

  1. 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.
  2. 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.
  3. 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.

Intent to Use Trademark Applications – Timing Is Everything

 

Don’t let the Statement of Use Requirement Pass You By

Once the ITU Trademark Application has been accepted and you have been issued a Notice of Allowance (NOA), you have six months to submit your Statement of Use.  Now, this does not mean that you are required to submit a Statement of Use in those 6 months and indeed many startups are forced to pay the extra fee and file an extension request.  Each extension request will allow the applicant an additional six months to provide the Statement of Use.  The applicant has the right to 5 extension requests, or a maximum extension time of 36 months, to file the Statement of Use from the time the NOA was issued by the USPTO.  However, if the applicant fails to file the Statement of Use, the mark will go abandoned.

 

Trademark Registration can be easy with a Top Trademark Lawyer. Speak with us today.

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