ABC 7 out of San Francisco reports that McDonalds has filed a new intent to use trademark for “Lovin’ is Greater Than Hatin’.” And while a major corporation’s trademark filing is not necessarily news, it does demonstrate the importance of an intent to use trademark to corporate expansion strategy.
An intent to use trademark allows a company to test two theories: (1) that the trademark in question is distinctive and capable of registration; and (2) that the new trademark is a useful brand name for a new product. With minimal cost, an intent to use trademark application allows a trademark filer to test these theories and to determine whether a given mark is a viable name for a future product — or often a product currently in the works.
Intent to use trademarks, or trademarks filed on a 1(b) basis, go through the standard application process. The intent to use mark is substantively examined by an examining attorney and, if it passes the examining attorney’s scrutiny, a notice of allowance is issued. Once a notice of allowance is issued, an intent to use applicant must show, within six months of the issuance of a notice of allowance, that the applicant is using the mark in commerce in association with the sale of goods or services. In short, an intent to use application allows a company to test the registerability of a proposed trademark before even using it.
This can be helpful in product development. Through extensions, an applicant can obtain an extension of time of up to three years to file a statement of use in response to an intent to use notice of allowance. This allows a company to continue to develop a product without the worry that a competitor will steal its unique brand name during the research or product development phase. For this reason, intent to use trademarks, such as the new McDonald’s filing, serve as a useful tool for protecting your trademark rights.
The intent to use application process, established under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b), was designed to allow businesses to secure a priority date for a trademark before they are ready to launch a product or service under that mark. This is one of the most strategically powerful tools in trademark law, and it is routinely underutilized by small and mid-size businesses while large corporations like McDonald’s use it systematically as part of brand development strategy.
The key advantage of an intent to use application is the priority date. Under U.S. trademark law, priority is generally determined by who was first to use a mark in commerce. But an intent to use application establishes a constructive use date as of the filing date, even though actual commercial use has not yet begun. If your application is ultimately approved and you file a statement of use, your rights in the mark will relate back to your original filing date — potentially months or years before you actually launched your product.
This means that a competitor who begins using a similar mark after your filing date — even before you have started using yours — cannot establish superior priority. The filing date locks in your position in the priority queue.
An intent to use application is filed with the United States Patent and Trademark Office through the Trademark Electronic Application System (TEAS). The application must include a clear representation of the mark, a description of the goods or services for which the mark will be used, the international classification of those goods or services, and a verified statement that the applicant has a bona fide intent to use the mark in commerce. The bona fide intent requirement is meaningful — the USPTO and courts have rejected applications where the applicant had no genuine intention to use the mark.
After filing, the application is assigned to a USPTO examining attorney who reviews it for compliance with the Lanham Act and USPTO regulations. The examining attorney will assess whether the mark is distinctive and registerable, whether it conflicts with any previously registered or pending marks, and whether the identification of goods or services is adequately defined. If the examining attorney identifies issues, they issue an Office Action requiring a response within three months (extendable to six months for a fee).
If the application clears examination, the mark is published in the USPTO’s Official Gazette for a 30-day opposition period. Any party who believes it would be damaged by registration of the mark may file an opposition with the Trademark Trial and Appeal Board (TTAB). Opposition proceedings can significantly delay or prevent registration, particularly when the opposed mark is similar to a well-known existing brand.
If no opposition is filed or the opposition is resolved in the applicant’s favor, the USPTO issues a Notice of Allowance. The applicant then has six months from the Notice of Allowance date to file a Statement of Use demonstrating that the mark is being used in commerce in connection with the identified goods or services. If the applicant needs more time, extensions are available at six-month intervals for an additional fee — up to a total of five extensions, giving the applicant up to three years from the Notice of Allowance to establish use.
Establishing use in commerce is a critical step that must be done correctly. For goods, use in commerce requires that the mark be placed on the goods, their containers, or the displays associated with them, and that the goods be sold or transported in commerce. For services, use in commerce requires that the mark be used or displayed in the sale or advertising of the services and that the services be actually rendered in commerce.
Token use — a single sale made solely for the purpose of establishing trademark rights — was historically sufficient but has been scrutinized more carefully in recent years. The USPTO now requires that use in commerce be genuine commercial use consistent with normal business practice for the type of goods or services involved. A single website landing page without actual service delivery, or a single promotional item sent to a friend, likely will not satisfy the use in commerce requirement.
An intent to use application is particularly valuable in several situations: when you are developing a new product and need to lock in priority before launch; when you are rebranding and want to secure rights to your new name before publicly announcing the change; when you are expanding into new product categories and want to protect your brand in those categories before you begin selling; and when you are considering acquiring or licensing a brand and want to explore whether the mark is registerable in connection with your intended use.
The cost of an intent to use application is modest relative to the value of the rights it can secure. Current USPTO filing fees for TEAS Plus applications are $250 per class of goods or services. That is a small investment to establish priority in a mark that could be worth substantially more as your brand grows.
Whether you are a startup protecting your first brand or a large corporation managing a global trademark portfolio, Revision Legal’s trademark attorneys can guide you through the intent to use application process and help you develop a trademark strategy that supports your business objectives. Contact us today for a consultation.
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