Trademark: Intent to Use


There are two primary types of federal trademark filings: (1) in-use; and (2) intent-to-use (ITU).  For an in-use application, the following items are needed:

  1. Declaration by Applicant;
  2. Filing fee; and
  3. Specimen showing the mark already used in commerce.
For trademarks already in use, common law rights already exist as to the geographic territory of use.  By filing the federal in-use application those rights expand to the entire United States and its territories. However, a drawback to an in-use application is that you may "hope" the USPTO will approve the mark for registration and that no third party will oppose it.

What if you plan to invest heavily into marketing and advertising and want more confidence in your freedom to secure and use the proposed trademark?  By filing an ITU you immediately obtain national constructive (legal) priority of rights to the trademark.  This means if you file an ITU for BRAND A on January 1, 2016 and Google launches a $100 million product launch of BRAND A for the same product/service on January 2, 2016, you have the superior legal rights to the trademark.  That is the amazing power of the ITU process.  Also, to file an ITU application, you only need a bona fide (good faith) intent to use the trademark in the future. 


Another nice feature of ITU practice is you will generally know in about four (4) months from filing whether the trademark examining attorney at the USPTO will approve your mark.  In about another four months you'll know whether or not any third party opposes the USPTO-approved mark.  Oppositions are fairly rare.  So having "pre-approval" via the ITU process before you spend funds on marketing and advertising is worthwhile insurance.

The only potential downside of an ITU filing is a relatively small administrative cost down the road.  At some point (prior or after approval) you will need to submit a specimen showing you are using BRAND A in commerce.  That typically costs under $600 to file. An ITU trademark application can be kept alive for three additional years by paying six (6) month extensions after about the first year from filing.  This gives the business plenty of time to shore up its product design, marketing campaign and distribution channels. 


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