LEGAL GUIDE
Written by attorney Nada M Alnajafi | Dec 30, 2010

Want to Reserve a Trademark Before You Start Using It? Benefits of Filing Intent-To-Use Applications

If you're like me, then your business is your baby. One of the most important decisions you will make regarding your business is what to name it. From the day your business is born, your customers will identify your products or services with the name of your business - your trademark. More often than not, you will think of the perfect business name before you even launch your business. But what if someone else starts using that name before you do? Can you somehow reserve your trademark for the future, for when you actually finish manufacturing your products, or for when your business website actually goes live? Fortunately, there is a type of trademark application called an intent-to-use (ITU) application. The ITU application allows you to file for a mark before you start using it, essentially allowing you to reserve your mark. This is different from the more commonly known trademark application, the actual-use (AU) application, which requires actual use of the mark before you file. So when is it appropriate for you to file an ITU application, versus merely waiting until you actually begin using the mark to file an AU application? Let’s say that you decide to start your own clothing line. First, you need to create t-shirt designs, buy fabric, and make a website. In the middle of all this, you think of a name that you want to use as your brand name – the perfect name. The only problem is that you haven’t finished making the actual clothing yet; hence, you have nothing to actually sell yet. You’re worried that someone else may take your name before you even get a chance to use it. So you talk to your team and they estimate another 6 months before you are ready to go live and start selling your clothes to the public. Thanks to the ITU application, there is no need to panic. You reserve your trademark ahead of time, before you ever begin using the mark in commerce. So – assuming you file an ITU application now, you will have a priority date that is 6 months earlier than if you wait until you begin selling your clothing. This means that you don’t have to worry about anyone who uses your trademark during that 6-month time span. In sum, you have the rights to your trademark from the moment you conceived it, rather than just from the moment you used it in commerce.

Filing an Intent-To-Use (ITU) Application NOW vs. Waiting to File an Actual-Use (AU) Application LATER - $275 filing fee per class - $100 filing fee once mark is used

  • $275 filing fee per class

  • Intending to use mark in commerce in the future

  • Already using mark in commerce

  • Priority date is filing date of ITUapplication

  • Priority date is filing date of AU application

  • Nationwide priority over others whouse the mark after the ITU application filing date

  • Nationwide priority over others whouse the mark after the AU application filing date

  • Assures mark is registrable before investing time & money into production of goods/services

  • Trademark Office may refuse to register the mark for various reasons that could have been identified before beginning production of goods/services

  • No requirement to actually use for up to 3 years

As you can see, there are many benefits to filing an ITU application rather that waiting until you use a mark to file an AU application. In just three simple steps, you can ensure that you protect your trademark, your baby, to the fullest extent possible.

Step 1: Once you have decided on a mark, and before you’ve actually used it, file an ITU application with the Trademark Office for a filing fee of $275 per class. Simply fill out the regular form, but assign it a 1(b) filing basis rather than a 1(a) filing basis. Step 2: Go about your normal production of your goods/services. You have from 6 months to 3 years (with proper extensions) from the date that the ITU application receives a Notice of Allowance, before you need to act on anything. Step 3: Once you actually start using the mark, file a Statement of Use/Amendment to Allege Use for a filing fee of $100 per class. As part of this, you will need to file a specimen (or a sample) of your mark as it appears on your goods/services. = Protecting your trademark ahead of time by reserving it with an ITU application. =

Receiving an earlier priority date, which gives you greater constructive notice rights.

Gets the hard part out of the way early on.

Additional resources provided by the author

U.S. Patent & Trademark Office (www.uspto.gov )

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