What is an ITU application?
An Intent-To-Use (ITU) trademark application allows an applicant to apply for a trademark that has not yet been used in commerce. Use in commerce refers to the usage of your trademark in connection with selling or offering the relevant goods or services. After the initial filing, the applicant must file a Statement of Use once the mark has been used in connection with the goods or services identified in the application.
Why file an ITU application?
If you do not yet have use in commerce of the trademark (e.g., sales of goods or services under the proposed mark), then an ITU application can provide significant benefits. By filing an ITU application, you get an earlier filing date even though you haven’t launched the product or made any sales. This earlier filing date, or “priority date,” can be a significant procedural advantage since the USPTO will not use later-filed applications for similar marks to block your application.
In competitive situations where third parties may be watching you closely, an ITU application allows you to secure an earlier filing date before others learn of your new mark upon a product launch.
What are the benefits of an ITU filing?
If your ITU application matures into a registration, your ITU filing date will be treated under the law as your date of first use in commerce. This “constructive use” of the mark means that the law treats you as if you had begun using the trademark in commerce as of the filing date. This substantive advantage can be critical in a case where someone begins using the trademark after your ITU filing date.
For example, let’s suppose you file an ITU application on March 1st and begin using the mark in commerce later that year on Sept. 1st. In the interim, a third party begins using a confusingly similar mark on similar goods/and services on April 1st – one month after your ITU filing date, but before your actual use in commerce. If your ITU application registers, you will have priority because your March 1st constructive use date precedes the April 1st actual use date of your competitor.
Ongoing Costs and Deadlines after initial filing
An ITU application will necessitate additional filings and associated costs as you will eventually have to show usage of the trademark in connection with the goods or services identified in your ITU 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 ITU applicant need not wait until the Notice of Allowance to file evidence of use. At anytime before a pending application is approved for publication, an Amendment to Allege Use (AAU) may filed. The requirements are the same as a Statement of Use. Only the title is different to refer 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 during the blackout period between the publication approval and the notice of allowance date.
Can an ITU application be assigned (transferred) to another entity prior to use?
No, an applicant cannot transfer an ITU application to another entity before the applicant submits evidence of use to the PTO (e.g., allegation of use / statement of use) [see TMEP 501.01(a)]. So, we recommend filing ITU 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 ITU 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 ITU application should include language stating that the mark is being assigned as part of entire business or portion thereof to which the mark pertains [see 15 USC 1060].
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