Intent to use trademark applications allow companies to resolve any potential trademark issues early, establish trademark priority rights, and invest in new trademarks and marketing campaigns with confidence.
Intent to use applications give business owners the flexibility of filing for a trademark application before ever using the trademark so long as they have a bona fide intent to use the trademark. However, filing an intent to use trademark application, also known as a 1(b) trademark application, costs additional money and takes more time to become registered than trademark applications based on “use in commerce.”
In particular, intent to use applications cost more because the “Statement of Use,” a requirement only for intent to use applications, cost $125 to file in addition to the initial trademark application fee. Additionally, they take longer to become successful trademark registrations because the trademark owner can only show use in commerce after the trademark application is examined by an Examining Attorney and Published for Opposition, rather than during the initial examination process.
Intent to Use Trademark Applications take a year or over three depending how quickly a Statement of Use is filed.
Because intent to use trademark applications take more time and cost more money, business owners often wonder what are the benefits of filing an intent to use trademark application? Benefits of filing a trademark application based on intent to use include: a) trademark owners can apply for a trademark registration before they use the trademark in commerce, b) resolve any potential trademark issues early, c) establish trademark priority, and d) have confidence to invest heavily in marketing campaigns.
Apply for Trademark Rights Before Use can Save Time
Perhaps the greatest benefit of intent to use applications, and the one where other benefits stem from, is the ability of business owners to apply for a trademark application before they begin using the trademark in commerce. In other words, trademark owners can be proactive and file for a trademark early rather than waiting until use actually begins. This can save time in the future for obtaining a trademark registration.
Intent to use applications require additional requirements and hurdles with the United States Patent and Trademark Office (USPTO) than use based applications, dragging out the application timeline. However, trademark owners who know they will begin using a trademark in the near future can more quickly obtain a trademark registration once they begin use of the trademark by filing an intent to use trademark application rather than waiting to apply for a trademark registration until actual use in commerce begins.
Trademark owners who file an intent to use application, and have it approved by the USPTO for registration, i.e. a Notice of Allowance issued, only need to file a Statement of Use after they begin using the trademark in commerce before the USPTO will register their application. The Statement of Use is a relatively simple filing where the trademark applicant needs to submit a specimen showing the trademark in commerce. A Statement of Use takes much less time for the Examining Attorney to review than an entire application. If a trademark owner waited until the trademark was used in commerce before filing an application, rather than being proactive and filing an intent to use application months earlier, it would take longer to receive a registration.
Trademark owners who want a trademark registration as soon as possible after they begin using a trademark in commerce, e.g. to get on the Amazon Brand Registry, will speed up the process by filing an intent to use trademark application.
Resolve any Potential Trademark Issues Early
Another benefit of filing an intent to use application is that business owners can resolve any potential trademark issues early in the process before a lot of money is invested in a trademark that may need to be scrapped.
There are many potential reasons why a trademark application may fail including whether it is functional, not distinctive, geographically descriptive and more. If a business is worried they will not be able to procure a trademark registration for their new brand, and will not proceed without one, they can find out whether their chosen trademark will be protected with a USPTO trademark registration.
Even more importantly, businesses can find out if there are any likelihood of confusion issues. Competent trademark attorneys will always conduct trademark searches, including USPTO knockout searches and common law trademark searches before filing a trademark application. In some cases, trademark attorneys may advise that there is a potential issue but the attorney will not know for sure until the Examining Attorney reviews a trademark application and after the Opposition Period.
Even if the Examining Attorney does not identify an issue during a USPTO knockout search or a common law search, some third party may come out of nowhere to oppose the trademark application during the Opposition Period. If an intent to use trademark application is not Opposed, the owner of the application can feel more comfortable knowing it is unlikely they will be subject to trademark infringement based on their new trademark once they begin using it.
Establish Trademark Priority before Use Begins
One of the most important benefits of filing an intent to use trademark application rather than waiting for actual use of the trademark is the owner of the application can establish trademark priority the date they file the trademark application.
Generally in trademark law, a business that first uses a trademark can establish trademark priority over any subsequent users in that region or marketplace. One of the benefits of a federal trademark application is that a trademark owner establishes trademark priority nationwide on the date they file the trademark application.
Businesses that file a trademark application based on an intent to use filing basis can claim their filing date as the date they established trademark priority over competitors. Their filing date may be two or even three years before they began using the trademark, which can have important repercussions in the event there is trademark litigation where trademark priority is an issue.
For example, if a company files a trademark application based on an intent to use the trademark in June 2015, but does not begin using the trademark until January 2017 and it is not registered until May 2017, they will have trademark priority over a competitor who begins using the same or a confusingly similar trademark in January 2016.
It is important for companies with a bona fide intent to use a trademark to establish trademark priority as soon as possible because many trademark disputes depend on establishing trademark priority. The most effective way for trademark owners to establish trademark priority for a trademark they are not using is to file an intent to use trademark application.
Invest in Trademark with Confidence
The benefit that business owners probably like the most about intent to use trademark applications is that, if the application is approved by the USPTO pending submission of a Statement of Use, businesses can invest in their new trademarks with confidence. For example, they will have approval from the USPTO that the trademark is distinctive and not likely to confuse with previously registered trademarks, the time for third parties to oppose the application passed, and trademark priority is established on the date the application was filed (not when it was first used).
The likelihood of a third party coming out of the woodwork to cause a trademark issue is greatly reduced after an intent to use application has received a Notice of Allowance. After the Statement of Use is submitted and the trademark is registered, it becomes much harder for third parties to cancel the registration.
One of the largest causes of concern among businesses when developing new brands is the fear they will be sued by a third party for trademark infringement. By investing a relatively small amount in an intent to use trademark application, businesses can invest heavily in brands that are approved by the USPTO and go unopposed during the trademark application process. For this reason, large companies often file intent to use trademark applications for upcoming marketing campaigns that they hope will be large, nationwide campaigns.
In conclusion, an intent to use trademark application gives business owners insight they cannot get any other way, such as knowing whether the USPTO will conlude the trademark is distinctive and not likely to cause confusion with an already registered trademark, and whether any third party will oppose the application. In addition, intent to use applications is the only way businesses to can establish trademark priority before they even use the trademark in commerce. With the knowledge the trademark application is approved, no third parties can oppose it and with an established priority date, businesses can feel comfortable investing heavily in trademarks they have not used to launch new products, services, ad campaigns and more.
Do you have any questions about the benefits of intent to use trademark applications or the application process? Contact us today for a Free Trademark Consultation and one of our attorneys will get to you within twenty four hours.