A trademark intent to use application is excellent for when you have chosen a trademark, but haven’t yet begun to use it. Done correctly, a trademark intent to use application can help you to “reserve” your rights in the mark that you have chosen while you work to get your product or service to market.
A trademark intent to use application helps you protect your mark even before you start using it.
The Trademark Intent to Use Application
I often get questions about whether or not someone can register a trademark even before using it. The answer is generally “yes” if you can file an intent to use application. This helps you to secure your trademark rights even before going to market.
Some things to know about trademark intent to use applications:
- A trademark intent to use application is often referred to as a “1(b) application.” This refers to Section 1(b) of the Lanham Act. The rules for filing a trademark intent to use application are outlined in Section 1(b).
- A trademark intent to use application is like a regular trademark application. The key difference from a regular application – also called a 1(a) application – is that when filing you don’t have to submit a specimen showing how you have used the mark in commerce.
- A trademark intent to use application requires a bona fide intention to use the trademark. A general rule of thumb is that a bona fide intent means to do real things in preparation to use the mark rather than just thinking about the mark. The trademark office gives you time to get your offering to market, but won’t allow you to “squat” on a mark.
- The trademark owner has six months to show use or to file for an extension to show usage. Once you file, you have six months to submit a specimen showing that you have used the mark in commerce. If you can’t show that use, you can typically file an extension for an additional six months, if neither of things are done, the application will be canceled. This involves additional trademark costs.
- The timeline is a little different than a regular trademark application. The United States Patent and Trademark Office provides a beautiful timeline for intent to use apps.
- You can’t go on the supplemental register with a trademark intent to use application. If your mark is descriptive or has to go on to the supplemental register for some other reason, an intent to use application will generally not be available. You must show usage of a descriptive mark to get a trademark registration.
This is just a start to give you an overview of how an intent to use application works. Naturally, each application is different and should be considered fully before determining whether an intent to use application is the right choice.
Since you are reading this, you know that trademark registration is essential. It is one of the most critical parts of your business, so make sure that you understand the elements of brand protection and how they serve your business.
