McDonalds: Lovin’ Intent to Use Trademarks

By John DiGiacomo

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, and serve as a useful tool for protecting your trademark rights.

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