INTENT-TO-USE TRADEMARK APPLICATIONS
The two minute run-down.
In a Nutshell:
An intent-to-use (ITU) trademark application allows you to secure your rights to a trademark before you are actively using the trademark in commerce for your business. This is a great option if you are still preparing to launch or rebrand but want to lock the trademark down in advance.
Pros & Cons:
There are some additional fees and filings associated with an ITU, so if you think you will be actively using the trademark in commerce in the near future and you aren’t in an urgent rush to lock the name down, then you could wait till you are using the trademark and then file a regular application. At the same time, the fees for an ITU are only a few extra hundred dollars if you are able to show use of the trademark within about a year, so some prefer to lock the trademark down in advance to avoid risk of losing the mark.
The cost to file an ITU application is the same as a regular application. However, with an ITU, you will also need to file a subsequent statement of use once you start using the mark in commerce. This will add an additional $100-$200+ in government and legal fees.
Showing Use in Commerce:
To file a statement of use (or to file a regular trademark application), you will need to show that you are actively using the trademark in commerce in connection with your listed goods and services. Generally, this means that you have the goods or services available for sale in connection with the trademark. An actual sale doesn’t necessarily have to occur.
For example, a “coming soon” launch page or social media account would be insufficient. But a website or other marketing materials showing your product or services available for sale may suffice. Different goods and services have different specimen requirements, but generally as long as your goods or services are actively available for sale in connection with your trademark your attorney can help you identify an appropriate specimen to file your statement of use.
Time to File Statement of Use:
After filing the ITU, you will have about 1 year to commence use and file your statement of use without paying for an extension, plus about 2.5 additional years if extensions are needed. Timelines and fees are further detailed below:
Processing Period - After filing the ITU application the USPTO will take about 5-8 months to process your application before it grants you a notice of allowance to file your statement of use (assuming your application is approved). This gives you some time to start using the mark in commerce.
Notice of Allowance - Once you are granted the notice of allowance, you will then have 6 months from that date to file your statement of use.
Extensions - If you haven’t commenced use in commerce within 6 months after you receive your notice allowance, then you can file for a 6 month extension. You can file up to five 6 month extensions, giving you up to 3 years from the date you receive the notice of allowance to file your statement of use. Each extension will cost $125-$250+ in government and legal fees.
This article is for informational purposes only and is not legal advice.