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Intent-to-Use Trademarks- How can they Help?

Do you have a business name, tagline, logo, catchphrase or other trademark that you plan to use, but aren’t using quite yet? Maybe you’re planning on starting your own small business, but you haven’t quite opened your doors yet. Or, maybe you want to rebrand your company, but haven’t launched your updated marketing materials yet. The intent-to-use trademark application is a great option for protecting trademarks you plan to use in the near future, but aren’t using in your business right now.

What is an Intent to Use Trademark?

An intent to use (ITU) trademark application can be filed before an applicant is actually using the mark “in commerce.” It allows you six months from government approval of the application to show use in commerce. An ITU application is actually the the earliest possible way for an applicant to get trademark protection. The U.S. Patent and Trademark Office (USPTO) also allows applicants to file extensions of time to the given six month window, if an applicant needs more time to be able to prove that their mark is being used in commerce. These extensions of time do have associated fees, but the fees can be well worth it for applicants that need longer than the given six months to show use of the mark in commerce.

Once the applicant has shown use of the mark in commerce, then the registration process will continue, and, if all else goes well, the mark will be registered.

Why file an Intent to Use Trademark Application?

So, if the ITU application won’t register until after use is shown, why file an ITU application? Why not wait to file until the applicant is actually using the mark?

Earlier Examination and Approval of the Trademark Application

The earlier that a trademark application is filed with the USPTO, the earlier that a trademark examiner will examine it and make an initial determination as to whether to allow the mark to proceed towards registration. Currently, it takes over 4-months for the initial examination of a trademark application. So, if a business intends to use a trademark within the next 6-months, it makes a lot of sense to start the process early to obtain the examination and initial review of the trademark application.

Earlier Priority Date can Prevent Other Parties from Registering Your Trademark Before You Actually Use It

Filing an intent-to-use trademark application can give you the earliest possible priority date for your mark. The filing date of the intent-to-use application will become the trademark’s priority date if the application is eventually registered. So, even if you don’t end up showing the mark’s use in commerce until a year after the USPTO’s approval, and the mark doesn’t register until shortly thereafter, the original date of filing will be the priority date for your trademark. The priority date is important because if two parties file federal trademark applications for the same mark in the same category of goods or services, the party with the earliest priority date will prevail. In other words, if your priority date is before the filing date of a third party’s trademark application for a similar mark, the third party’s application may be suspended pending the outcome of your application. And if your ITU application results in a registered trademark, the third party’s mark most likely would not be allowed to register.

Only Spend Marketing Money After a Trademark Application has been Initially Examined and Approved

When you file an ITU application, it allows a business to wait on spending marketing funds using the trademark until after the trademark has been initially examined by a trademark examiner. During the initial examination, if the trademark examiner wants to allow the trademark to proceed toward registration, they will indicate that no conflicting marks were found that would prevent the trademark registration. If this initial examination is positive, the probability of obtaining the trademark registration is increased substantially and the risk of wasting marketing funds using the trademark is decreased substantially.

Brand Flexibility

When filing an ITU application, an applicant has more flexibility to determine exactly how they want to use the mark. For example, a use-based trademark application requires an example of the mark being used in commerce to be filed with the trademark application. So, an applicant already needs to be using the mark on their website or other marketing materials. But, an ITU application allows the applicant that minimum extra six months to develop the brand further and to determine exactly how they want to display the trademark on their marketing materials. Of course, the mark itself cannot change. But, the applicant can use that time to develop the company, the product, and thereby, the marketing materials on which the mark will appear. All of this can be done before having to actually show use of the mark in commerce.

Next Steps

We recommend intent-to-use trademark applications for anyone looking to start a new business or launching a new product and is not yet using their trademark but plans to in the near future. Please reach out to us today with any questions or inquiries you have about your trademarks!

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