What is an (ITU) Intent-To-Use Trademark Application? How to File Before Using a Mark

What is an Intent-To-Use application?

To register a trademark, you normally have to use the mark. Registration generally requires use in commerce by selling goods or services in connection with the applied-for mark. 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 (ITU application) allows you to apply to register a mark before use in commerce. You will eventually need to show use in commerce by submitting examples of your relevant goods or services being sold in connection with your mark.

It’s not exactly a loophole, but the ITU application certainly provides an advantage that every startup and small business should consider. After filing an ITU application, you must eventually submit evidence of use of the trademark by filing a Statement of Use.

Need to file an Intent-To-Use trademark application? Call Vic at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help you apply before others try to register a similar mark.

How can you file a trademark application before using the mark?

If you have not yet sold any good or services under your desired mark, then an ITU application can provide significant benefits. By filing an Intent-To-Use 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.

An ITU 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. So expect additional costs to cover subsequent work as discussed below.

Do you own the trademark once an ITU application is filed?

Not necessarily. Trademark rights are generally obtained by being the first to use a mark in selling specific goods or services. An ITU application can lead to earlier trademark rights once it matures into a registration. As discussed below, the benefit of the ITU application is the earlier priority date given to a trademark that would have been in actual use at a later time.

What are the benefits of an Intent-To-Use application?

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 is a significant advantage. It has the potential to make or break your case when you are trying to prove trademark priority against someone who began 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. In other words, their earliest use date is after your ITU filing date, but before your actual use in commerce. If your ITU application registers, you will have priority because your constructive use date precedes the earliest actual use date of your competitor.

An earlier filing date also leads to an earlier examination of your trademark application. Trademark applications are examined by the USPTO in the order received. Therefore, any third party applications for similar marks subsequent to yours may be suspended pending the outcome of your application, even if they claim a first date of use that precedes your filing date.

The USPTO has a helpful guide on ITU applications.

What are ongoing costs and deadlines after initial filing?

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 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?

The general rule is that 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].

Win the race to the Trademark Office by filing an ITU application

You’ve already done the hard part of finding a name for your product. Why risk years of delay because someone else filed a trademark application by a few months or even days before yours? Let’s get your trademark application in the queue now.

Email Vic at vlin@icaplaw.com anytime or call (949) 223-9623 to develop and execute a winning strategy to protect your trademarks.

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