What is an In-Use Trademark Application?
There are several different types of trademark applications. US trademark applications can be based on foreign trademark applications or registrations, and they can be based entirely on domestic use. An in-use trademark application is probably what most people think of when they talk about a trademark application. It goes by a few names – a use-based trademark application, a § 1(a) trademark application, a trademark application based on actual use, and probably several others – but it can be thought of as a basic, classic trademark application.
Trademark rights are, fundamentally, based on use of a trademark in the US. As part of the examination process for almost all trademark applications, the applicant must prove that they are selling a product or offering a service under a name, logo, slogan, or other type trademark. If they can do that, it establishes that the trademark is being “used” or is being “used in commerce” or, more simply, is “in use.”
The Trademark Office thus requires that applicants submit such proof of use at some point during the examination process, so that an Examiner can review the sufficiency of the use. In an “intent to use” application, or § 1(b) application, the applicant can prospectively file the application before using the trademark, and it can then later supplement the application after the Office issues a trademark notice of allowance. The applicant does that by submitting a specimen showing that the trademark is being used. The Examiner then reviews the specimen and either approves or rejects it. With an in-use trademark application, however, the applicant provides that specimen up front, so that the application is (presumably) complete on filing. The Examiner has everything required for examination from the get-go.
An in-use trademark application must include a specimen showing how the trademark is used in connection with the applied-for goods or services. It must also identify a date on which the trademark was being used. When an applicant submits this information, together with biographical information and a list of goods and/or services, the Trademark Office ostensibly has everything it needs to completely examine a trademark application right away. This is contrasted with the intent-to-use application, where the Office can begin examining the application but can’t finish examination until the applicant proves use.
The decision to file either an in-use trademark application or an intent-to-use application can sometimes be driven purely by the status of the business. If you haven’t yet launched the business, product, or service that you are going to be using the trademark with, then you cannot file an in-use trademark application. However, you must then decide whether to file an intent-to-use application right away or wait for launch to file an in-use application. There are costs and benefits to either route.
The main advantage to an intent-to-use trademark application is that it can be filed immediately. For example, for most clients, we can usually prepare such an application within the same day that it is ordered. Because the Trademark Office operates primarily on a first-to-file system, filing an intent-to-use application can be a good way to ensure your application is in front of other potential filers, who then will either be discouraged from filing, will be placed second in line, or will have to challenge your application to have a chance of registration.
However, intent-to-use applications usually take more time to process through the Trademark Office, and they also generally cost more to register, all other things being equal. Because those applications require the additional step of submitting a specimen, which incurs government fees and requires government review, they are slightly more burdensome to prosecute.
In-use trademark applications, on the other hand, move more smoothly through the Office. If you pe
rform a trademark search and other due diligence before filing, it is quite possible that you can file an in-use trademark application and never have to touch it again until it registers about a year later. This often makes in-use trademark applications cheaper and quicker than their intent-to-use counterparts. However, the major drawback to an in-use application is that the applicant must wait until they are using the mark to file. If you don’t think your business or product will launch for several months, that can be a big delay in filing, and it can expose you to enough risk of someone else filing in front of you that you may choose to file an intent-to-use application instead.
If you are choosing whether to file an in-use trademark application or an intent-to-use one, please consult a competent trademark attorney. If you’d like to talk with me, Phoenix trademark attorney Tom Galvani, feel free to reach out through my contact form at the bottom of this page or call me at 602-281-641. I work with clients across the United States and internationally.