Intent-To-Use Trademark Application Problems: What can go wrong?

What are some Intent-To-Use trademark application problems?

Intent-To-Use trademark applications are great. You get to file an application to register a trademark that you have not yet used. No specimens required. No dates of first use. What’s not to love? In fact, I often recommend ITU trademark applications for startups and businesses at an early stage of product development. As much as we like them, there are traps for the unwary when you attempt to register a trademark that you have not yet used.

Let’s look at what can go wrong in an ITU trademark application.

Can an Intent-To-Use trademark application be assigned to a new owner prior to filing a Statement of Use?

An Intent-To-Use (ITU) trademark application cannot be assigned to a new owner prior to the original applicant filing evidence of use. In other words, the original applicant of an ITU must first use the trademark in connection with the goods or services identified in the trademark application. The applicant must then submit such evidence of trademark usage to the USPTO by filing an Amendment To Allege Use or a Statement of Use depending upon the stage of the application.

Only after filing such proof of usage can the original applicant assign the ITU application to a new entity. But, what if the original applicant desires to transfer ownership of an ITU application prior to submitting evidence of use to the USPTO? Can it be done?

How to transfer ownership of ITU trademark applications

There is one exception that would allow for the transfer of an ITU application to a new owner. An ITU trademark may be transferred if the prospective assignee (new owner) is the successor to the business of the original applicant to which the trademark pertains, and that business is ongoing and existing [15 USC Section 1060(a)(1)]. In this situation, the trademark assignment should be properly drafted. Language should be included in the assignment to reflect the fact that the mark is being assigned as part of the entire business or portion thereof to which the mark pertains.

What is a successor to the business of the original applicant?

Assigning an ITU application to a successor to the business can get tricky. How do we know if the prospective new owner (“Assignee”) is a successor to the business? One way to tell is whether the original applicant still continues that particular line of business even after the assignment. If the original applicant (“Assignor”) continues to sell the same products at issue even after the assignment, an argument can be made that the business of the original applicant has not been transferred to the assignee.

Treating ITU applications like domain names

Thus, ITU trademark applications should not be treated like domain names. Unlike a domain name, an ITU trademark application cannot be easily sold and transferred. Except for applications based on foreign registrations, the USPTO takes the use requirement seriously, and generally expects ITU applicants to follow up with evidence of use.

Can a trademark license agreement establish use for an ITU trademark application to be assigned?

Trademark license agreements might be able to establish use for a trademark owner who, in and of itself, has not yet used the mark in commerce. Assuming the license agreement is properly drafted and the subsequent transactions reflect what is in the written agreement, then an applicant may establish use of a trademark by virtue of the use by a licensee which inures (goes) to the benefit of the licensor/applicant. Maintaining quality control is a key factor in trademark ownership.

Chicken and egg problem: First incorporate or file trademark application?

To avoid the ITU assignment trap, entrepreneurs can form a new company before filing a trademark application. The ITU application can then be filed on behalf of the new company, thereby avoiding the assignment problem. Before incorporating, however, cofounders should check the USPTO trademark database to see if their desired corporate name might cause conflicts later.

Identifying an unrealistically high number of goods or services

One of the benefits of an ITU application is the freedom to identify as many goods and services as you want. Without the need for specimens of use or dates of first use, it can be tempting to list too many items. Is that a problem? It can be if the applicant did not have a bona fide intent to use the trademark on all the goods or services.

Need to file an Intent-To-Use trademark application the right way?

Reach out to patent and trademark attorney Vic Lin by email or call (949) 223-9623 to see how we can help you file a proper Intent-To-Use trademark application. Save time and money by avoiding these ITU traps for the unwary.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
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2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
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Genevieve Springer
2022-09-09
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InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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