Intent-to-Use Trademarks

An intent-to-use trademark application is an application that claims a company has an intent to use a trademark on products or services before it actually has launched those products or services.

Trademarks are valuable assets for businesses.  They protect brand identities and establish market recognition.  In the United States, almost all trademarks must be used to qualify for federally-registered rights.  But that does not mean that you have to wait to use the trademark before you can file an application for it.  In the US, there is a way to file an application long before you launch your business, products, or services.

You can file an intent-to-use trademark application on a trademark that are planning on using.

Intent-to-use trademarks allow businesses to begin securing rights for a mark before it is actually used in commerce.  Here, I discuss the specifics of intent-to-use trademarks, their benefits, drawbacks, the application process, and how they can help you and your business strategically protect your brand.

Understanding Intent-to-Use Trademarks

An intent-to-use trademark application is a type of application filed with the United States Patent and Trademark Office to secure rights for a mark that is not currently being used in commerce but for which the application has a good faith intent to be use in the future.

Intent-to-use trademarks are based on Section 1(b) of the Lanham Act, the statutory provisions that govern federal trademark law in the US.  For this reason, they are sometimes called “1(b) applications” or applications with a “1(b) basis.”

Although I hate to use the word “reserve,” Lanham Act Section 1(b) provision does effectively allow businesses to reserve a trademark while they develop and prepare to launch a new product or service.

Benefits of Intent-to-Use Trademarks

While there are a few drawbacks and risks involved with intent-to-use trademark applications, there are a number of benefits.  They include:

• Priority and Preservation: By filing an intent-to-use application, your business can establish a priority date, which can be crucial in determining ownership rights in case of conflicts with later-filed applications. And since you can file an intent-to-use application before you launch, you can file early and potentially get ahead in line at the Trademark Office, which examines applications on a first-come first-served basis (mostly).
• Flexibility and Strategic Planning: Intent-to-use trademarks provide businesses with the flexibility to plan their brand strategies in advance. Businesses can begin to secure trademark rights before investing in branding efforts, marketing campaigns, and product development.  This lets the company see whether the trademark will be approved before all those efforts.  Branding, marketing, and product development is typically much more expensive than the trademark application process, so this can present a huge hedging of costs.
• Brand Protection: Filing an intent-to-use application temporarily reserves the desired mark at the Trademark Office. This will suspend all later-filed applications for the same or similar marks, preventing others from adopting their mark while your business prepares to launch.  This safeguards your brand’s integrity and avoids confusion in the market.

Drawbacks of Intent-to-Use Trademarks

• Additional Costs: With an intent-to-use trademark application, the Trademark Office allows you to file without proving that you are using the trademark at the time of filing, but it will not let you register the mark until you provide that proof with a statement of use. The Trademark Office charges for submission of that proof.  This usually happens several months into the application process, so there will always be additional downstream costs involved in the successful registration of an intent-to-use application.
• Susceptible to Challenge: Because intent-to-use application are predicated on a bona fide intent to use the mark at the time of filing, they are vulnerable to an attack that questions that basis. If you do not have a real intent to use the mark, do not file a 1(b) application.  If you do file one, be sure to have and hold records that demonstrate your bona fide intent.  That could be business plans, communications and orders with vendors, and other documentation to show you were making real strides toward launching the trademark.

The Intent-to-Use Application Process

The intent-to-use application process is very similar to the in-use trademark application process, with a few minor differences.  The steps of the process include:

• Research and Preparation: Before filing an intent-to-use application, conduct a thorough trademark search to ensure the mark is available for registration. Given the long processing times at the Trademark Office right now, running a trademark search now should tell you how your application will be examined months later.  This can save you a lot of time and money if the search reveals that your chosen mark is not registrable.  Prepare the necessary information, including a description of the goods or services associated with the mark.  Having a competent local trademark attorney do this can vastly increase your chances of registering the trademark.
• Establish a Bona Fide Intent to Use: In order to file an intent-to-use application, you must have a genuine intention to use the mark in commerce. This requires having concrete plans for using the mark on goods or services within a reasonable timeframe.  Make sure that you store documentation demonstrating those plans, because you may be called on someday to prove your past intent.  This can be difficult to do without good recordkeeping.
• File the Application: Using TEAS, the Trademark Office’s online filing system, submit the intent-to-use application to the USPTO, providing details about the mark, yourself, the intended use of the mark, and a declaration of your bona fide intent to use the mark in commerce. Pay the appropriate fees, and the application will be assigned a filing date.
• Examination and Publication: The USPTO will examine the intent-to-use application for compliance with legal requirements. A trademark examiner will review the application for formal, technical issues as well as more substantive issues, like whether the mark is descriptive or presents a likelihood of confusion with another mark.  If the examiner finds no issues, the Trademark Office will publish the application in the Official Gazette for a 30-day opposition period.  If the examiner does find any issues, he or she will send an office action that presents those issues and sets a three-month deadline for your response to the issues. 
• Statement of Use: After the USPTO publishes the intent-to-use application, you have a limited 6-month period to submit a Statement of Use demonstrating that the mark is being used in commerce. The Statement of Use should include evidence such as product samples, marketing materials, or other documentation proving the actual use of the mark on the goods or services identified in the application.  If you are unable to meet this 6-month deadline, you can request (and pay for) an extension for another 6-month period.  Several extensions are available, but you must pay for each one.  After 5 extensions, it is put up or shut up time, though – you either have to show use or let the application abandon.
• Registration: If the Statement of Use is accepted, the mark should mature into a registration, and the Trademark Office will issue a registration certificate. Nothing more is required in the application process.

Registration and Maintenance

The Trademark Office requires that a trademark owner complete official maintenance work at the 5-year and 10-year anniversaries of registration and every ten years after that, for as long as you are using the mark.  If you fail to file this paperwork, the Office will cancel your trademark registration.

Trademarks are potentially perpetual.  As long as you use the trademark, you will continue to have rights in it.  However, to maintain the validity of a trademark registration, you must actually use the mark in commerce continuously and exclusively.  Failure to do so can result in the cancellation of your trademark registration.

To ensure that your rights are exclusive, you should consider patrolling for infringing uses of your trademark.  Monitoring for copycats and similar marks not only helps prevent confusion in the marketplace but strengthens your brand value.  For example, if you want to license your trademark, and you can show a potential licensee that you forced five other companies to take a license after discovering they were using a similar mark without authorization, you will have real evidence of the value of your trademark.  Without monitoring, you may not have become aware of those five infringers.

Conclusion

Successfully registering an intent-to-use trademark application in the United States involves conducting a comprehensive search, filing an intent-to-use application with the USPTO, undergoing examination, and submitting an acceptable Statement of Use demonstrating the mark’s actual use in commerce.  By filing an intent-to-use trademark, businesses can strategically protect their brands and establish priority rights while preparing for the launch of new products or services.

This blog post provides a general overview of intent-to-use trademarks in the United States.  While the above-described steps may appear straightforward, there is a still a lot of nuance in performing them, and there are a number of opportunities for missteps and fatal mistakes.  For specific legal advice and guidance tailored to your unique circumstance, consult with an experienced intellectual property attorney to ensure you plan and file the best intent-to-use application possible to maximize the protection of your brand.