Can I File a Trademark Application Before I Use the Mark?
Yes, you can file an intent-to-use trademark application before you use the mark in commerce. In this article, I will discuss what an intent-to-use application is, why it can be beneficial, and how it is different than an in-use application.
To register a trademark, the general rule is that you have to use the mark in commerce. So how is it possible to apply for registration when a trademark has not yet been used? As implied in its name, an intent-to-use trademark application allows an applicant to file an application to register a mark before the applicant has made any sales of its products or services in the marketplace.
If you have not yet sold any goods or services under your desired mark, then an intent-to-use application can provide significant benefits that every startup and small business should know. With that being said, an intent-to-use application will require further work and costs after the initial filing. Unless your application is based on a foreign registration, you will eventually need to show use of the mark on the goods or services identified in your application. This means that you must eventually submit evidence of use of the trademark by filing a Statement of Use, so expect additional costs to cover subsequent work as discussed below.
What are the benefits of an intent-to-use trademark application?
There are three reasons that an intent-to-use trademark application can be beneficial. The first benefit is that by filing an intent-to-use application, you get an earlier filing date even though you have not launched the product or made any sales at the filing date. This earlier filing date, or priority date, can be a significant procedural advantage since the United States Patent and Trademark Office (USPTO) will not use later-filed applications for similar marks to block your application. In competitive situations where third parties or competitors may be watching you closely, an intent-to-use application allows you to secure an earlier filing date before others learn of your new mark upon a product launch.
As an example, if you file a trademark application on December 1st, 2019, but it isn’t registered until December 1st, 2020, your rights in the mark will be retroactive to the filing date of December 1st, 2019. This is important as you’re developing your brand because although you can come up with a brand name quickly, it can take six or more months to execute your business plan and actually bring a product or service to the market under that name. An intent-to-use application will ensure that nobody can come to market faster than you and take your brand name or logo and file the same or a similar trademark with the trademark office to block your ability to register the name later on.
The second benefit is that you can obtain the USPTO’s review or opinion of your trademark application to determine if the USPTO thinks there’s any conflict between your mark and any other mark before you even begin selling your products or providing services in the marketplace. By obtaining the USPTO’s opinion on your trademark application before you begin selling products or providing services under the mark, you’ll know whether the USPTO will approve your application. This can be beneficial because you don’t want to invest millions of dollars in inventory with labels on your products with a particular name if you know that the USPTO is not going to approve your trademark application.
The third benefit is that an intent-to-use trademark application allows you to claim a broader scope of goods and services than you might otherwise be able to in an in-use commerce trademark application or than you may initially intend to offer in the marketplace. For example, if you plan to offer a brand of cookies under a particular brand name, but you’re thinking about offering a brand of coffee in a year or two from then, you can file an in-use trademark application for just the cookies, which is what you are actually selling at the time of the filing, and then file an intent-to-use application for any other goods or services that you may want to sell or provide. This will ensure that competitors do take your trademark in a related or slightly unrelated field while you’re working to expand the brand.
Keep in mind trademarks can coexist across industries. A few examples include Delta Faucets, Delta Airlines, Dove chocolate, and Dove soap. So just because you file a trademark application for a brand of cookies doesn’t mean a third party can’t start a clothing line using the same brand name or open a restaurant under that brand name. Therefore, you may need to file additional trademark applications to cover a broader scope of goods or services if you intend to get into those different lines of businesses later on.
What are the ongoing costs and deadlines after I file an intent-to-use trademark application?
As noted at the outset of this article, an intent-to-use application will require additional filings and costs. After the initial filing, you must eventually show usage of the trademark in connection with the goods or services identified in your intent-to-use application. The deadline for submitting evidence of trademark usage, including a signed declaration and specimens of use, is 6 months from the date of the Notice of Allowance issued by the USPTO. You may request 6-month extensions of time for a total of 3 years from the Notice of Allowance date.
An applicant need not wait until the Notice of Allowance to file evidence of use. At any time before a pending application is approved for publication, an Amendment to Allege Use may be filed. The requirements are the same as a Statement of Use. The only difference is the title which refers to the timing of the filing (i.e., prior to approved for publication vs. after Notice of Allowance). The only time when use evidence may not be filed is between the publication approval and the notice of allowance date.
At our firm the cost to prepare and file a Statement of Use is typically $350 dollars in legal fees and a $100 in per-class government filing fees.
Can I Assign or Transfer an Intent-To-Use Trademark Application to Another Entity Prior To Use?
The general rule is that an applicant cannot transfer an intent-to-use application to another entity before the applicant submits evidence of use to the USPTO, e.g., allegation of use or statement of use. So, we recommend filing intent-to-use applications under the name of the company under which the client intends to sell the identified goods or services, and not under the name of any individuals.
The exception to this rule is that an intent-to-use application may be assigned, prior to use of the mark, to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing. Therefore, a trademark assignment of an intent-to-use application should include language stating that the mark is being assigned as part of entire business or portion thereof to which the mark pertains.
Beat Your Competitors by Winning the Race to the Trademark Office
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