Filing an intent to use trademark application with the United States Patent and Trademark Office (USPTO) under Section 1(b) may be a good option if your trademark is not yet in use in commerce. It’s essentially a way to reserve your right to use a name, logo, or slogan in connection with the advertising and sale of specific products/services. Assuming your intent to use trademark application eventually becomes a trademark registration, all of your rights will date back to the filing date of the application. In other words, filing an intent to use trademark application prevents others from potentially acquiring common law trademark rights in a similar name while your trademark application is going through the trademark application process.
Can I File an Intent to Use Trademark Application?
In order to file an intent to use trademark application, you must meet two requirements:
- You must have a bona fide intention to use the trademark in commerce in connection with the products and/or services identified in the trademark application. Put another way, you must have a legitimate and genuine intent to provide all of the products/services listed in your application and that you’re not filing the application merely to reserve a right to use the mark.
- You must be entitled to use the mark in commerce in connection with the products and/or services identified in the trademark application. This means that the person or entity listed as the applicant is, in fact, the person or entity that will control the use of the trademark and the quality of the products/services you intend to provide.
What Happens After Filing My Application?
After you file your intent to use trademark application, it will be reviewed by an examining attorney at the USPTO just as if your application was filed on an in-use basis. The only difference is that the examining attorney won’t require any proof of use of your trademark before approving your application for publication.
After your trademark is published for opposition, the USPTO will issue the Notice of Allowance. You then have six months in which to convert your intent to use trademark application into an in-use application by filing the Statement of Use. Please note that you may only file the Statement of Use if your trademark is in use in commerce. If your trademark is not in use in commerce by the end of the six month period, you may file a Request for an Extension of Time, which will buy you another six months in which to make use of your trademark and to file the Statement of Use. Once the USPTO accepts the Statement of Use, it will issue the Certificate of Registration and the US trademark registration process will be complete.
Need Assistance Filing an Intent to Use Trademark Application?
I’m experienced US trademark attorney Morris Turek. If you’re still a little unsure about what intent to use means, or perhaps want some help filing an intent to use trademark application, please contact me right away for a completely free consultation. I may be reached at morris@yourtrademarkattorney.com, by phone at (314) 749-4059, or by submitting the contact form located at the bottom of this page. I look forward to speaking with you soon.