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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.

Last week we wrote about What Everybody Ought to Know About Trademark Law and this week we will dive deeper to explain how to obtain and protect your rights. We’ll cover how trademark rights stem from use, why common law rights have geographical limitations, how marks are associated with specific goods or services, why only distinctive marks may be protected, and why trademark registrations are encouraged.

1. Common Law Rights Stem From Use

Generally speaking, you must use your mark in commerce before you may seek protection. As an example, say Evan begins marketing his new coffee shop, Evan’s Coffee Shop, in May and opens for business on July 1. His date of first use is July 1 and he can then begin using the ™ symbol.

2. Geographical Limitations

Common law trademark rights are limited to geographical areas. For example, if Evan’s Coffee Shop is in Chicago, he can prevent other coffee shops in Chicago from using the name “Evan’s” with respect to coffee shops. However, his rights don’t extend to San Francisco because his rights are limited to Chicago and nearby areas where he is likely to expand.

3. Goods or Services Limitations

Trademark rights only extend to specific goods and services. In Evan’s case, the operation of a coffee shop is his service. Thus, if another Evan opens Evan’s Auto Shop in Chicago, our friend Evan couldn’t prevent the auto shop from using the name Evan. But, Evan can stop others from using the name “Evan’s” in connection to other coffee shops and perhaps also in connection to similar businesses like bakeries. A good example is Delta, which could mean faucets or an airline. That dual use is allowed because it is unlikely consumers will think their Delta pilot is actually a faucet salesman.

4. Distinctive Requirement

Marks may not be protected unless they are distinctive and capable of identifying a particular source of the good or service. A mark which is arbitrary or suggestive is likely distinctive and can usually receive protection. However, if a mark is descriptive or generic, protection is harder to obtain.

In Evan’s case, his name in relation to the sale of coffee is arbitrary and, assuming there are no other barriers, he can likely protect “Evan’s” in relation to the sale of coffee. However, “coffee shop” is descriptive and generic and, therefore, he cannot protect that portion of his mark.

5. Registration is Encouraged

We mentioned above that common law rights are limited to specific geographic areas. Luckily for Evan, he can obtain nationwide rights with a federal registration with the United States Patent & Trademark Office (he also has the option to register at the state level). Once registered he can use the ® symbol and he will have nationwide protection and also a legal presumption that he owns the mark.

Register Your Mark!

If you want to register your mark be sure to visit MightyMarks.com to learn how we can help you obtain your registration!

Image: Thinkstock/Silvia Antunes

*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.