Should You File an Intent To Use Trademark Application?

The Lanham Act permits the owner of a mark that hasn’t been used in commerce to reserve that mark for later registration.

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The Lanham Act permits the owner of a mark that hasn’t been used in commerce to reserve that mark for later registration. This is accomplished by filing an intent-to-use (ITU) application (sometimes referred to as a “1b application”) with the U.S. Patent and Trademark Office (USPTO). The initial reservation is for six months from the date the USPTO approved the mark (which may be six months to a year after you file your application) and can be extended for up to five additional six-month periods for good cause. The date of the original ITU application serves as the priority date in case of conflict, regardless of when the use actually begins, as long as the applicant completes the registration process.

Actual registration will occur once the owner begins to use the mark in commerce and files an Allegation of Use for Intent-to-Use Application informing the USPTO of that fact. Without the timely filing of one of these forms, or a purchase of an extension, the ITU application will lapse. Filing an intent-to-use application requires more than a desire to use the mark; it requires actual evidence of the intent—for example, business, advertising, or marketing plans. (Intel Corp. v. Emeny, TTAB Opposition No. 91123312 (May 15, 2007).) An applicant that was unable to provide any documents or other evidence of an actual intent to use a mark can not claim rights as an “intent to use” applicant. (L.C. Licensing, Inc. v. Berman, 86 U.S.P.Q.2d 1883 (TTAB 2008).) A foreign registrant who “has not had activities in the U.S. and has not made or employed a business plan, strategy, arrangements or methods there,” and “has not identified channels of trade that will be used in the United States,” does not have a bona fide intent to use the mark. (Honda Motor Co., Ltd. v. Friedrich Winkelmann, 90 U.S.P.Q.2d 1660 (TTAB 2009)).

The initial intent-to-use application costs the same as an actual use application, plus an additional $150 for each additional six-month extension and $100 to file the Statement of Use—when you finally start using it in commerce.

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