Intent to Use: How to Protect a Trademark Before Actual Use

May 6, 2014 — 4 Comments

In an earlier post we mentioned that actual use in commerce is a prerequisite to obtaining federal trademark protection. But when you spend time and money building a brand before you actually open for business, you’d sure like to get protection up front. The good news is you can do just that with an Intent to Use application.

An ITU application essentially holds your place in line. If you have a bona fide intent to use the mark in commerce then you can file the ITU application. The filing fee is the same as a regular application but there are additional fees as you move forward through the process.

The Timeline

In most cases the USPTO will respond to your application in about three months. If the application is approved, it will move through the opposition process and, if unopposed, you will receive a Notice of Allowance. That notice sets in place your next filing deadline.

Within six months of the issuance of that notice, you must file a Statement of Use (the fee is $100).

If you aren’t actually using the mark before that deadline expires, you can extend the deadline an additional 6 months by requesting an extension and paying $150. And if you need, you can make 4 additional extension requests (each one costing $150).

As a result, an ITU application can hold your place in line for quite a while, but the fees add up over time. And you have to be careful not to miss a deadline; otherwise you might lose your priority to another applicant.

Abandonment of an ITU Application

Each deadline is very important because, if you miss any one of the deadlines, the USPTO will send you a Notice of Abandonment. This means you must either revive the application (if you act quickly and pay additional fees) or you must start all over.

Next Steps

If you have questions about which type of application you should file or if you want assistance with your application, reach out to the Mighty Marks team today to discuss your options!

Image Credit: Thinkstock/digitalgenetics

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

Trackbacks and Pingbacks:

  1. What To Do First: Company Name or Trademark « MIGHTY MARKS® BLOG - March 3, 2015

    […] you have not started using your business name in commerce, you can file an Intent to Use Application with the USPTO to get approval on your name. You just have to have a bona fide intent to use the […]

  2. How to Assign Ownership of a Trademark Registration « MIGHTY MARKS® BLOG - June 25, 2015

    […] Trademark rights stem from use of a mark in commerce, meaning you cannot own a trademark registration unless you are actually using the mark in commerce (but be sure to check out our post on intent to use applications). […]

  3. How Much Does a Trademark Application Cost? « MIGHTY MARKS® BLOG - January 12, 2016

    […] in mind, however, that if you file an Intent to Use Application (sometimes called a 1(b) application), then you must pay an additional $100 at a later date when […]

  4. Trademark Law 101: Everything You Need to Know About Trademark Registrations « MIGHTY MARKS® BLOG - January 26, 2016

    […] How to Get Trademark Protection Before Use in Commerce […]

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