Can I have an 'actual use' application converted to an 'intent to use' application?
So the question: Is it possible for a trademark attorney to have my 'actual use' application converted to an 'intent to use' application? Or do I have to start over, just filing a new intent to use application?
4 attorney answers
Yes, you can convert a use based application (Section 1a) to an intent-to-use application (Section 1b). Look up the Trademark Manual of Examining Procedure (TMEP) online and then look at Section 806.03(c) Amendment From §1(a) to §1(b). It explains everything in detail and I have copied and pasted it below. Keep in mind, however, that this often times does not solve the problem because the issue is usually more substantive. You really should speak with a tm lawyer to sort this out. It takes many months to get an application through to registration and if you have to start over you want to do it sooner rather than later. Best of luck and here is the text of TMEP Section 806.03(c):
If a §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce when the application was filed, the applicant may substitute §1(b) as a basis. The Office will presume that the applicant had a continuing valid basis, because the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. 2.35(b)(3).
When amending from §1(a) to §1(b), the applicant must submit a verified statement that the applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods/services since the application filing date. 15 U.S.C. 1051(b)(3)(B); 37 C.F.R. 2.34(a)(2).
See TMEP §806.03(j) regarding amendment of the basis after publication.
Yes, under certain circumstances. For example, if the trademark is considered descriptive you will have problems. The best thing to do is hire a trademark attorney with experience in this situation and share the facts with them confidentially.
While you can covert a 1(a) [actual use] to a 1(b) [intent to use] if the actual use allegation fails, it is seldom a wise idea as then you have a fouled up file history of public record and just open your application up to all sorts of attacks. It is much better to start over with a new clean ITU application or, better yet, get actual use so that you DO meet the requirements.
See what a mess you can make when you don't use an attorney. I suppose you know you could have had an attorney do this right at less cost with better result. You are not learning the lesson you need to learn if you go back and now DIY all over again. What will be the next error you make that torpedoes you? Please, learn up and lawyer up.
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.
You must start over.
You can convert from intent to use to use in commerce, but the use in commerce declaration under penalty of perjury is that your mark is in (legally acceptable) use. If you "found out" by virtue of an office action, don't miss your deadline to reply. If not by an office action, perhaps your use is acceptable and you should get a second opinion. Perhaps.
The above is general legal and business analysis. It is not "legal advice" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.