Registering Trademarks Based on “Intent to Use

A federal trademark registration can be made on an “in use” or an “intent to use” basis. Registering  a trademark before it is ready for commercial use is a common USPTO procedure, but there are a few aspects of the process you need to be aware of before filing.

Defining the “Intent to Use” Basis

The USPTO defines the “intent to use”, or ITU, basis as follows: “If you have not yet used the mark but plan to do so in the future, you may file based on a good faith or bona fide intent to use the mark in commerce. A bona fide intent to use the mark is more than an idea and less than market ready. For example, having a business plan, creating sample products, or performing other initial business activities may reflect a bona fide intent to use the mark.” Basically, if you haven’t used your mark yet, but you plan to do so in the relatively near future, filing an ITU form can protect your mark, even before it is in use commercially. However, that isn’t the only benefit ITU registration has to offer.

What are the Benefits of Filing an ITU Registration?

There are two main benefits to filing an ITU registration before your mark is actually in use.

  • Filing the ITU allows you to know whether the USPTO will approve registration of the mark before you invest advertising money promoting the mark.

  • The ITU filing date will serve as the legally valid date of the first use of the mark, giving your mark additional protection in case a conflict develops with another mark.

Completing the Registration Process

The USPTO generally issues a notice of allowance (NOA) if no conflicting marks are found. The NOA indicates that the mark has been allowed, but is not yet registered. To continue with the registration process you must do the following within six months of the issue date of the NOA:

  • File a “statement of use” with the USPTO if you are now using the mark in commerce;

  • Begin using the mark and then submit the “statement of use”; or

  • Submit a six-month “Request for an Extension of Time to File a Statement of Use” in case you need more time to begin using the mark in commerce.

ITU registrations can be a bit complicated, especially if you are having difficulty proving use of your mark or your application meets with opposition during the filing process. If you would like advice or help regarding your ITU registration, I would be happy to assist you.
Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida.  She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets.