Clients often ask us whether they should file an intent to use trademark application or whether they should simply wait until they have used their trademark in commerce before filing a trademark application. Section 1(b) of the Lanham Act allows a person to file a trademark application prior to using the mark in commerce. In order to do so, the applicant must have a bona fide intention to use the trademark in commerce, and we typically tell clients that they should be ready to use the mark in commerce within six months.

Intent to use trademark applications provide numerous benefits, but three key benefits are important.

First, an intent to use application allows an applicant to discover whether the United States Patent and Trademark Office will view their mark as inherently distinctive and eligible for trademark registration prior to their use of the mark in commerce. If an applicant does not file an intent to use trademark application and the filed for mark is determined to be merely descriptive or generic, the applicant will be precluded from registering their trademark on the Principal Register of the USPTO, which is the primary purpose of filing a trademark application.

An intent to use application allows an applicant to select a name, file for trademark registration, and, if the mark is deemed merely descriptive or generic, the applicant can abandon the application and adopt another mark without much risk.

Intent to use applications also avoid the pitfalls associated with the difficulty in identifying common law trademark uses. Common law uses, specifically, the use of marks in commerce without filing for registration, can preclude an application for registration. If a business uses the same or similar mark prior to an applicant but does not register it, that business may have common law rights to that mark that limit the applicant’s rights, regardless of whether the applicant is later granted federal registration. It is often difficult to identify common law trademark uses because, by their very nature, they are not listed within the United States Patent and Trademark Office database. Filing an intent to use trademark helps the applicant avoid a potential claim of trademark infringement, which sometimes occurs where an applicant files an application based on a current use in commerce and a third party common law user discovers the application.

Priority Dating: The Core Advantage of Intent to Use Applications

Perhaps the single most important benefit of filing an intent to use trademark application is the priority date it establishes. Under the Lanham Act, the filing date of an intent to use application serves as the constructive date of first use once the mark is ultimately registered. 15 U.S.C. § 1057(c). This means that the applicant’s priority as against third parties dates back to the application filing date, not to the date the mark was first actually used in commerce.

The practical significance of this priority rule cannot be overstated. Consider a scenario where Company A files an intent to use application for a mark in January and begins actually using the mark in July of the same year. Company B, knowing nothing of Company A’s application, begins using the same mark in March — before Company A began use but after Company A filed its application. When Company A’s registration ultimately issues, its priority dates back to January, giving it nationwide priority over Company B even though Company B was the first to actually use the mark in commerce.

This priority advantage is particularly important for companies that are building toward a product launch. Every day that passes between conception of a brand name and the filing of a trademark application is a day during which a competitor could file first and establish superior priority rights.

The Statement of Use Requirement

An intent to use application does not result in registration on its own. After the USPTO approves the mark for publication and it survives the opposition period without challenge, the applicant receives a Notice of Allowance. Within six months of the Notice of Allowance, the applicant must either file a Statement of Use — demonstrating actual use of the mark in commerce — or file a Request for Extension of Time to submit the Statement of Use.

Extensions are available in six-month increments, and the USPTO will grant up to five extensions (for a total of 36 months from the date of the Notice of Allowance) upon a showing of good cause. The applicant must pay a fee for each extension request and must continue to demonstrate a bona fide intention to use the mark in commerce. Once the Statement of Use is filed and accepted, the registration issues.

It is important to understand that the mark must be used in commerce in connection with all of the goods and services identified in the application. If the applicant begins using the mark for some but not all listed goods or services, the Statement of Use should be filed only for the goods or services actually in use, and the remaining goods or services should be expressly deleted from the application. Overstating use in the Statement of Use can render the registration vulnerable to cancellation for fraud on the USPTO.

When a Use-in-Commerce Application May Be Preferable

Intent to use applications are not always the right choice. If you are already using the mark in commerce and have been doing so for some time, filing a use-based application under Section 1(a) of the Lanham Act may be appropriate. A use-based application allows you to file immediately upon demonstrating that the mark has already been used in interstate commerce, and registration can sometimes issue more quickly than with an intent to use application because there is no waiting period for the Statement of Use.

The decision between an intent to use and a use-based application depends on the specific facts of your situation: how far advanced is product development, whether use has already begun, how quickly you need the mark to be registered, and the competitive landscape for the mark in question. A trademark attorney can help you evaluate these factors and select the filing strategy best aligned with your business objectives.

Conducting Clearance Before Filing

Whether you file on an intent to use basis or a use basis, trademark clearance is essential before filing. A comprehensive clearance search examines the USPTO database, state trademark registries, common law uses in industry publications and online sources, and domain name registrations to identify any potentially conflicting marks. Filing without clearance is a significant risk: a later-filed application that conflicts with an existing registration will be refused, and if you have already invested in launching a brand under the mark, the cost of rebranding can be substantial.

Revision Legal’s trademark attorneys conduct thorough clearance searches and provide written legal opinions on registrability and the risk of conflict with existing marks. If your mark clears, we will prepare and file the most appropriate application for your situation and manage the prosecution process through registration.

Contact Revision Legal’s trademark attorneys today at 855-473-8474 or through our website to discuss your trademark filing strategy.