Entrepreneurs seeking to solidify brand identity and secure their position in a competitive marketplace often wish to take proactive measures to secure the maximum protections for their trademark intellectual property (IP) rights. In some circumstances, they may even wish to initiate the process of federal trademark registration through the United States Patent and Trademark Office (USPTO) before they have actually put their trademark into use through their first formal transaction or the launch of their maiden marketing campaign. In these instances, they may wish to consider submitting their applications on an intent-to-use (ITU) rather than the use-in-commerce (UIC) filing basis. To learn more about intent to use trademark applications and discuss the trademark registration strategy that may be most appropriate for your business, consider scheduling a conversation with an experienced business law and intellectual property attorney from Business Law Group. Call (504) 446-6506 today to set up your tailored consultation. 

Trademark Law: History & Jurisdiction

A trademark is an identifier used by one business to distinguish its goods or services from the similar goods or services offered by other businesses in the marketplace. Modern regulations surrounding the use of trademarks have their roots in common law, which traditionally held that the intellectual property (IP) rights to a trademark came from devising a unique identifier and using it – as the name suggests – in the conduct of trade. 

Intellectual Property Rights & Regulation of Commerce 

These origins have had a couple of important implications for the development of trademark law in the United States. The first concerns the way intellectual property rights are established: A business gains its right to a trademark initially by creating the mark and putting it into use; in technical terms, government agencies do not grant trademarks, but rather register them in formal acknowledgement of the owners' IP rights. The second concerns jurisdiction: Because the rights to a trademark come from using the mark in trade – which is to say, in commerce – in the United States, trademark registrations and their related legal processes fall under the jurisdiction of government agencies that regulate trade.

USPTO Trademark Jurisdiction

In the United States, the authority to regulate trade within each state is reserved to that state, while trade between the states (also known as "interstate commerce") falls under the jurisdiction of the United States Department of Commerce (DOC). The DOC operates a number of smaller bureaus and offices, one of which is the USPTO, the agency responsible for maintaining federal trademark registrations. 

Trademark Application Filing Basis 

Because the USPTO derives its authority from the DOC, the agency is limited to registering trademarks used in commerce across state lines, as the USPTO otherwise lacks jurisdiction. The agency therefore requires domestic trademark owners filing an application to register their marks to select one of two filing bases: The owner of a trademark may submit either a use-in-commerce or an intent-to-use trademark application. 

The USPTO explains that the two filing bases for domestic trademark registration applicants pertain to the two basic scenarios under which a trademark owner may apply: 

• Use in Commerce: The trademark owner may file under the UIC basis if they are already using the mark in the ordinary conduct of their business.

• Intent To Use: Trademark owners may select this filing basis if they are not yet using the mark, but plan to begin using it within the next four years.

What Is Use in Commerce for Trademarks? 

When a trademark owner submits an application to register their mark, they must carefully delineate all goods and services with which they wish to register the mark. Otherwise, even though the mark itself may be successfully registered, any goods or services that were not included in the original application will not be considered valid uses of the registered trademark and will not benefit from the protections afforded by federal trademark registration through the USPTO. Trademark owners applying for USPTO trademark registration will need to:

1. State that the mark is already in use with each product or service listed in the application. This statement must be introduced with specific, standardized language, which will then be followed by the actual list of goods and/or services with which the applicant seeks to register the mark.

2. Provide the date the mark was first used (anywhere) with each item. These dates may be different for different goods or services. 

3. Provide the date, for each good or service listed in the application, when the mark was first used in commerce. The date of first use in commerce is often the date of the first transaction, but in some instances could also be the date when the mark was first used to advertise a specific item. 

4. Present a sample (the USPTO calls this a "specimen") showing how the mark appears, as it is actually used, for each class of goods or services. The USPTO follows international standards for the differentiation of trademark classes. 

5. Attest, via affidavit or signed declaration, the accuracy of the information presented in the four preceding steps. 

Ensuring comprehensive listings of all items that should be covered and selecting the most appropriate trademark class for each item can be surprisingly difficult, so many business owners prefer to work with a trademark attorney who is familiar with the USPTO application process. 

What Is an Intent To Use Trademark Application? 

Sometimes an entrepreneur may create their trademark well in advance of brand launch, or they may create the trademark and experience delays in the business startup process but still want to register their mark to ensure their IP rights are protected. In these cases, they can consider filing an intent to use trademark application. A business startup attorney from Business Law Group with expertise in intellectual property considerations may be able to help you determine whether an ITU application for trademark registration makes sense for your situation. 

What Are the Benefits of an Intent To Use Application? 

According to guidance from the USPTO, trademark owners may wish to submit applications to register their marks even before they begin using their IP in the conduct of their business in part because the filing date of the application can help to establish right of priority for use of the mark. Because of the derivation of trademark intellectual property rights founded in actual use (as described above), in general the "right of priority" in trademark disputes will be accorded to the party that can show the earliest use of the mark. However, 15 U.S.C. §1057 specifies that the filing date of an application for federal trademark registration can constitute a "constructive use." The "constructive use" clause means that, in case of disputes over potential trademark infringement, trademark owners can use their trademark application filing date, rather than their trademark application first use in commerce date, to establish they have exclusive rights over the mark by virtue of prior use.

How Much Does It Cost To File an Intent To Use Trademark Application?

Although submitting an application for trademark registration on the intent-to-use filing basis can offer some advantages, it may also present additional expenses, outlined by the USPTO. Trademark owners who receive a Notice of Allowance (NOA) but have not yet fulfilled their plans for putting the mark into commercial use will need to request an extension from the agency within six months from the NOA's postmark. Filing the extension request requires payment of a separate $125 fee for each trademark class covered. 

If the trademark is already in use by the time the NOA is issued, or if the trademark owner requests an extension and the mark is in active use by the time the extension expires, then a statement of use (SOU) or amendment to allege use (AAU) must still be filed before the trademark registration takes effect. The SOU must be accompanied by a specimen of use demonstrating how the mark actually appears in the ordinary conduct of business for each good or service included in the application, along with the first date of use for each item (similar to the requirements described above for applications originally filed under the use in commerce filing basis). This step, too, requires an expenditure: The SOU must be accompanied by a filing fee of $100 per trademark class for which the applicant alleges use. 

Speak With an Experienced Trademark Attorney To Evaluate Your Options 

An intent-to-use trademark application may allow a business to secure important IP protections by establishing right of priority. At the same time, many businesses may encounter hurdles that slow their entry into the market and require multiple extension requests before they can show use in commerce for their trademark – requests which can multiply the expenses involved in registering a trademark. If you are considering the intent to use trademark registration filing basis for your brand, consider speaking with an experienced business law and intellectual property attorney to gain perspective tailored to your situation. Schedule a consultation with a member of the Business Law Group team by calling our office today at (504) 446-6506.