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 applicant. Since an intent to use applicant has not yet used a mark in commerce, the applicant, by definition, cannot yet be held liable for trademark infringement.
Finally, filing an intent to use application allows an applicant to avoid the risks associated with arbitrary decisions by USPTO examining attorneys. USPTO examining attorneys are not infallible, and, in our practice, we have received many seemingly arbitrary refusals (and allowances) from examining attorneys. When an applicant files an application based on a current use in commerce, and where that applicant has invested significant resources into its brand prior to filing a trademark registration, a refusal by an examining attorney can be devastating to the applicant’s business. If the applicant files an intent to use application, however, and the USPTO examining attorney refuses the application, the applicant can simply rebrand because it has not yet invested significant financial resources in the trademark.
Though these are not all of the benefits of an intent to use trademark application, these are some of the most important. If your business seeks to file a trademark application, contact us and we can help you through the process.