What is an Intent-to-Use Trademark Application and is it worth your while (and money) to file one?
Trademark owners who are not yet using their trademarks in commerce or who do not have proper specimens showing use of their trademark may file an Intent to Use trademark application with the United States Patent and Trademark Office (USPTO). The Intent-to-Use application is based on Section 1(b) of the Trademark Act. The applicant must include a sworn statement of their bona fide intention to use the mark and must begin actual use of the mark in commerce before the USPTO will allow trademark registration.
Once the applicant makes actual use of their mark in commerce, the Applicant must notify the USPTO of such use. An Amendment to Allege Use may be filed any time between the filing date of the application and the date the USPTO approves the mark for publication. If an Amendment to Allege Use is not filed and the ITU mark passes the USPTO Examiner’s initial review and publication period, the Examiner will issue a Notice of Allowance (NOA), which is essentially a provisional approval of the mark but not actual registration.
The applicant has six (6) months from the issuance of a Notice of Allowance to file a Statement of Use or request an extension of time to make use. There are additional fees associated with filing the Allegation of Use and Statement of Use. If an Amendment to Allege Use or a Statement of Use is not filed within the time limits allowed, the trademark will be refused registration and the application will become abandoned.
So it is worthwhile to file an Intent to Use trademark application? Yes! An ITU application secures your trademark’s place in line at the USPTO. If you have selected your brand name, logo or slogan and intend to use the mark, filing an ITU trademark application ensures your filing priority at the USPTO and is the first step to ultimately obtain trademark registration. In evaluating newly filed trademark applications, the USPTO reviews its database to determine if there are any exact or similar registered or pending trademarks that may be confused with the newly filed mark. Any registered or prior pending marks that are already in the USPTO system, whether filed as in use or intent-to-use, may be used as the basis for the USPTO to refuse registration of a newly filed mark that could result in consumer confusion.
READ: Concurrent Use Trademark Registration Explained
In short, if you have not yet made use of your mark in commerce (as required by the Trademark Act to qualify for registration) or are awaiting the products, labels, packaging, brochures, website or other materials needed to demonstrate your use of the mark, the Intent to Use application may be the ideal means for you to start the trademark registration process at the USPTO.
If you have any questions about ITU trademarks or need assistance in applying for your trademark, please contact us for a complimentary consultation with one of our trademark attorneys, (305) 913-1333 or please use our contact form.
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