Clients often ask if it’s possible to file a trademark application if they have not yet started doing business under the proposed trademark name. The answer is YES. You can file what’s called an “intent-to-use” trademark application to begin securing your trademark rights even before you start doing business.
What is an Intent-to-use Trademark Application?
An intent-to-use trademark application is a federal trademark application in which the applicant states that they are not currently using the trademark in commerce as part of its business, but that it plans to do so in the near future. The applicant must have a bona fide intention to begin using the trademark in commerce at the time of filing this type of trademark application.
This “fide intent” is a crucial statement in the application process, demonstrating to the trademark examiner that there is a genuine plan to use the mark in commerce. The application is scrutinized for its bona fide intention to ensure that the mark will be actively used in interstate commerce, which is a requirement for federal trademark registration.
How Long Do you Have to use an Intent-to-use Trademark Application?
If the U.S. Trademark Office approves the intent-to-use trademark application, and if no third- parties oppose the application during the 30-day opposition period, then the Trademark Office will issue a “Notice of Allowance,” which basically requires the trademark applicant to prove within 6 months that it has begun to use the trademark in commerce since the date of filing. However, the applicant may request extensions of time to prove use for up to 2.5 years (although there are additional fees attached to each extension request). Once the necessary proof of use is filed and accepted by the Trademark Office, the Office will issue the trademark registration.
What is an “Actual Use” Application?
The “actual use” application is the standard type of federal trademark application. It contrasts with the intent-to-use application by requiring evidence of the mark’s current use in interstate commerce at the initial filing. It will also require knowing the date of the first use of the mark. The “actual use” application is a faster and cheaper way to get a trademark registered compared to the “intent-to-use” application.
Understanding these types of trademark applications is essential for applicants to choose the right form based on their business activities and plans.
How to Apply for an Intent-to-use Application
As with any trademark, you file your application with the USPTO, however, with the intent-to-use application, no evidence of its use is required. An Examining Attorney will then check that the trademark rules and regulations have been complied with and that there are no conflicting marks in existence.
After the trademark examiner reviews the application and finds it meets the requirements, the next step in the trademark application process is the mark for publication. This stage allows any third party who believes they would be harmed by the registration of the mark to file an opposition. They have 30 days to do so.
Once this period is over, the intent-to-use application will enter into a “Notice of Allowance” which gives the application 6 months from the mailing date to submit evidence of the use of their trademark in commerce.
The cost of filing an intent-to-use application can vary depending on the number of classes of goods or services the application covers. Each class of product or service requires its own application process and fee.
Throughout the application process, from the initial filing to the final registration, applicants must navigate through various steps, including choosing the correct basis for filing, completing the form, and providing a detailed description of the product or service associated with the trademark in connection with which the mark will be used.
It can be helpful to have a Trademark Attorney to help you navigate the complexities of the application and ensure it’s been completed accurately as those applying are certifying under penalty of perjury their intent.
