Intent To Use Trademark Applications
There are two types of applications available to an applicant seeking trademark registration:
- Section 1(a) Actual Use Application– The applicant is currently using their trademark in commerce relative to the goods/services they offer or sell. The applicant is required to submit a specimen of use at the time of the filing (proof that the mark is being used in commerce).
- Section 1(b) Intent to Use Application– This application is filed based on a bona fide intention to use your mark in commerce. Meaning, the applicant is not currently using their trademark in commerce but plans on doing so in the future.
In the United States, trademark rights are based on use in commerce, or actively selling your goods and services. With an ITU application, the applicant must submit a sworn declaration – subject to criminal penalties. This serves as evidence for the Government (USPTO) that you are using the mark with the goods & services described in the application.
Throughout this process, it is important to document any and all efforts to start your business involving the goods & services listed in your application. Keep the dates in your documentation consistent with the date you filed your application. Show evidence of your research or development of products/services, market research, and any steps to acquire distributors or obtain government approval.
How Long is the Intent to Use Trademark Application Process?
Approximately one year. First, we file the application and wait for it to be examined by the USPTO. This could take 4-6 months. If the Examining Attorney finds the mark registrable, the application is then published for opposition. The opposition period is 30 days. If no opposition is filed, you then receive a Notice of Allowance (NOA).
After a NOA is issued, the applicant has 6 months from the NOA to file a Statement of Use (SOU). If you are not yet using the mark by that deadline, extensions of time to make SOU are available. You can get up to 3 years of extensions. However, you have to file the extension requests every six months, and there is a fee for each extension. The SOU then gets examined to determine of the proof of use is adequate.
The trademark process can often be complex. ITU applications are one of the potential first steps towards registering your trademark. See our article for more information on the Trademark Process.
What are the Requirements?
1. Statement of Use (SOU) – Filing a SOU is the last step before registration. It is a verified statement that the applicant believes it is the owner of the mark and/or the applicant has used the mark.
The SOU must be filed 6 months from the mailing date of the NOA. Included in your SOU is the date you first used the mark, the date you first used the mark in commerce, a signed declaration that you are now using the mark in commerce for the identified goods & services, a specimen of use, and the filing fee. United States trademark applicant’s cannot get a trademark registration without proof of use.
2. Specimen of Use – The “Specimen” shows how you use your mark in commerce in connection with your goods or services; e.g. photographs of packaging, website screenshots, labels, containers, or tags for the goods or a display associated with the goods.
The SOU and Specimen of Use are examined by the examining attorney at the USPTO, and can be rejected if it fails to support use in commerce for the goods & services listed in the application and the exact trademark in the application.
Benefits of Filing an ITU Application
1. “Constructive Use” – Upon registration, ITU filing grants the applicant nationwide priority over others. A successful applicant who files SOU in a timely manner is entitled to the original application filing date, even if the actual use in commerce was 3 years after the application. This means your mark has filing date priority over someone else’s mark if a legal conflict develops.
Filing an ITU Application allows the applicant to discover whether the USPTO will view their mark as inherently descriptive & eligible for trademark registration before use of mark in commerce.
2. Branding your business is costly. Re-branding is even more costly. – The ITU process gives you (the applicant) a chance to know whether the trademark will be granted BEFORE you begin spending time and money on a branding campaign. When choosing a trademark, clients will file ITU applications for several different marks that can be used as backup marks if the first choice is blocked, denied, or opposed.