If your business is planning to launch a new product and you have a new trademark in mind (but you haven’t started using it yet, and no one else is either), you have the option of locking down your trademark so that no one else takes it while your marketing team starts to prepare in earnest:
Meet the “Intent-to-Use” trademark application!
The Essentials
An “Intent-to-Use” (“ITU”) trademark application allows your business to begin to secure rights to a trademark even before you start using the mark in commerce. The U.S. Patent & Trademark Office (which we will call “the Trademark Office” from here on) asks that your ITU application identify:
- Your proposed trademark, and
- a list of the goods and/or services that will be covered
But the Trademark Office does not require you to show that you have used the mark yet for your products and services. You can file an ITU application with the Trademark Office to reserve your trademark if you have a good faith intention (trademark lawyers call it a “bona fide intention”) to use that trademark for selling the listed goods or services in the near future.
Why would you want to do this? As you may guess, ITUs reserve your trademark and also start the clock on your trademark’s seniority (in trademark speak, “establish priority for ownership”) even before you have officially launched in the marketplace.
You should be aware that, if someone else has already been using that mark to make sales in the U.S., filing your ITU won’t guarantee your rights. But, assuming that no one else is using the mark, an ITU application can help protect you as a brand owner and give you a little bit of time to finalize your product development and marketing strategies.
The Bona Fide Intention Requirement
The key is your sincere intention to move forward with the trademark you are reserving. A bona fide intention to use a trademark means a genuine, good-faith plan to utilize the mark in commerce for specific goods or services in the foreseeable future.
It’s not enough if you are still playing with trademark concepts or have casual thoughts about trademark design. You have to have a concrete plan to use a particular trademark. If asked, you might have to prove this by showing things like:
- business plans that include the intended trademark;
- product prototypes that will be sold with the intended trademark;
- marketing materials with the intended trademark;
- agreements with manufacturers or distributors or
- any other documentation that supports the claim of legitimate intent.
This good faith requirement helps the Trademark Office ensure that businesses aren’t locking down trademarks on speculation alone – that trademarks the Trademark Office actually reserves are genuinely intended to be used in the marketplace.
On the other hand, the Trademark Office does not normally evaluate the good faith of an ITU applicant. Generally, if you submit (as you must) a sworn statement of your bona fide intention to use the mark in commerce, that’s enough to satisfy the Trademark Office of your good faith.
If there’s a dispute later – perhaps from a user of a similar mark – you can expect closer inquiry and requests for corroboration and kinds of evidence listed above. But, for the purposes of filing the ITU, the Trademark Office does not delve deeply into your proof without some reason to question your intention to use the trademark you have reserved.
Examination & Publication
Once you file your ITU application, the Trademark Office treats it much like a regular application to register a trademark. The additional steps for ITUs are spotlit for you, below.
- First, the ITU application is assigned to a Trademark Office examiner, who will research the trademark to check that: (a) it is distinctive, (b) it does not conflict with older trademarks still in use; and (c) you have properly identified the goods and services you are selling under your intended trademark. These same steps are part of the examination of a regular trademark application.
- If no red flags are raised, the ITU application will go to publication. Like a regular use-based trademark application, the Trademark Office will publish your ITU application so that anyone who believes that they will be harmed by registration of your intended mark has a chance to file a “Trademark Opposition” proceeding (the “speak now or hold your peace” part of the trademark registration process).
- If no one opposes the registration of your intended mark, your ITU then follows a path that is unique to ITU applications.
- After the opposition period expires without any opposition, the Trademark Office will issue a “Notice of Allowance” to confirm that your ITU application successfully passed examination and was not opposed after publication. The Notice of Allowance typically comes about eight weeks after your ITU mark is published and is a key document because its issue date establishes the due date for you to file your Statement of Use.
- The next big step for you to complete your ITU application is filing a Statement of Use (“SOU”). Your SOU identifies the date you first officially use your reserved trademark in commerce. This statement serves as evidence that you actually and actively are using the trademark in commerce for the goods or services you specified. You can think of this as a way to fill in the gaps in the original application papers.
Time Period for Filing SOU & Extensions
Your SOU is required to be filed within 6 months of the issuance of the Notice of Allowance. If you fail to file an adequate SOU within 6 months, that failure will be taken as an abandonment of the ITU application, sending all your hard work down the drain.
If you just need more time (perhaps because your business still hasn’t launched the new brand), you can get an extension of time! Extensions come in 6-month increments. The first 6-month extension can be had for the payment of a fee. After that, you may be eligible for 4 more 6-month extensions (up to two years after your first extension runs out) if you pay the fee, but now you have to show “good cause” for why you were not able to start using your reserved trademark to sell goods or services. Typically, you can show you have “good cause” for more time by filing a sworn statement you still are preparing to use the mark in commerce and continue to do things like developing the product, looking for distributors, or completing market research.
The total time available for filing the statement of use may be extended to a maximum of 3 years from date the Notice of Allowance was originally issued. But if any of your interim deadlines (at 6-month intervals) are missed or if you fail to file your SOU within 3 years, the application will be abandoned.
- After the SOU has been filed, it will be examined. If everything is in order, your business’ new trademark will be registered on the Principal Register.
- Along with your SOU, you must submit to the Trademark Office a specimen of use which clearly demonstrates how your reserved trademark is being used in commerce to identify your goods or services.
For goods, acceptable specimens may include photographs of the product itself with the trademark displayed, tags or labels affixed to the product, or packaging where the trademark appears prominently.
For services, examples include brochures, advertisements, website screenshots, or signage showing the trademark in connection with the services you offer.
It is crucial that your submitted specimen of use shows your actual use of the trademark in the marketplace rather than a mock-up or mere intent to use. Further, the submitted specimen must show use of the exact same trademark you said you intended to use. If you make any material changes to the mark between when you file the ITU application, and when you actually use it, you risk rejection of your SOU. The Trademark Office looks carefully at specimens to ensure they satisfy these conditions. The keys are your accuracy and authenticity in showcasing the trademark’s use.
Pros & Cons of the Intent-To-Use Trademark Application
An ITU application has lots of pros. Some of them are below:
- It enables you to reserve a trademark before you actually use it.
- It allows you to register your trademark in multiple classes (for a variety of different goods you plan to launch at different times) and, later, split the application as each new group of products is actually launched and you are able to show you have used your trademark for those products/services in commerce.
- It follows the predictable use-based application in most respects.
But beware of the important drawbacks, too.
- ITU applications are more expensive than a regular use-based application when you factor in the additional costs associated with the Statement of Use you must file.
- Because trademark application filings are public, your ITU filing could tip off your competitors or the media about your planned new product launch.
- The Trademark Office’s examining attorney will look at your application twice. First, they will see your trademark when you file your ITU. Next, they will get a second look when you file your statement of use.
Ordinarily, between the first and second looks, the Trademark Office should not raise new issues with registering your mark.
But there is a possibility — especially if a lot of time passes between your ITU application and your SOU filing — that your trademark becomes descriptive or even generic for your associated goods or services, which could trigger a refusal to register your mark after you finally roll out your products under it.
- Finally, ITU reserved trademarks may not be registered on the Supplemental Register until you submit an acceptable statement of use.
Conclusion
An “Intent-to-Use” (ITU) trademark application is a great way to try to secure your U.S. trademark rights before you’re fully up and running. It’s perfect for a business that is gearing up to launch a new product or service, but which has not yet started to sell or publicly use that trademark yet.
When you file an ITU application with the USPTO, you only need to show that you genuinely plan to use the trademark in the near future. The application will ask for some basic details—like the mark itself and the goods or services it covers. Once the USPTO gives you the green light, the clock starts running on your next required filing — a Statement of Use — to show you’re actually using the trademark.
This option gives you a chance to protect a new trademark even as you’re getting ready to hit the market with a new product or service.
Lapple Ubell IP Law is an intellectual property law firm based in Irvine, California, dedicated to helping clients protect, manage, and enforce their innovations and creative assets. The firm provides strategic counsel on patents, trademarks, copyrights, and related IP matters for businesses of all sizes.
The author, Matt Lapple, is an experienced intellectual property attorney and a past-president of the Orange County Intellectual Property Law Association. If you have questions please contact Matt at matt@lappleubell.com or 949-756-4889.
