You’ve come up with the perfect name for a new business or product. Amazingly the name is still available and you’re eager to stake your claim on it now, instead of waiting six months until you’re actually in business. You can purchase the domain name now, but what about federal trademark protection?
The United States Patent and Trademark Office (USPTO) offers an “intent to use” trademark application. This is a way to file a trademark application before you actually put the mark in commerce. Think of it as reserving a trademark before you’re ready to launch your product, service, business or whatever uses the mark. In this article, we’ll cover some of the basics of an intent to use trademark, so you can decide if it’s the right path for your future business or product.
What is an Intent to Use Trademark?
Two of the most common U.S. trademark application types are: actual use and intent to use. An actual use trademark application requires that you are already using the mark in commerce. As described above, the intent to use application can be used if you haven’t yet used the name in commerce, but plan on doing so in the future.
The fees are about the same for an actual use and intent to use application. The only difference is that with the intent to use application, you will also need to file a statement of use (and pay a fee) once you actually put the mark in commerce.
The key benefit of the intent to use application is that it sets your filing date as the “constructive use” date for establishing nationwide priority. For example, let’s say that you file an intent to use application on June 1 but haven’t launched the product/service yet, and another company files an actual use application on July 1. You then put your product/service into commerce in October and file a statement of use. You’ll successfully have the registered trademark, and superior rights to the other company.
How Long Does it Last?
The USPTO will give you six months from the time you file your intent to use application to put the mark in use and file your statement of use. If you need more time, you can file an extension request. The USPTO can give you up to five six-month extensions if you can show good cause for the extensions. In other words, as long as you can show there’s a reason you need the extensions, you can have up to three years from the time you first file your intent to use application.
No Trademark Trolls Allowed
You may have heard of patent trolls … those unscrupulous businesses that don’t actually create any new products, but buy up patents and then send out threatening letters to those they claim are infringing on their patents. There’s no such thing in the trademark world and here’s why.
Even the intent to use trademark application requires that you to have a bona fide intention to use the mark in commerce. And, you need to show objective evidence of your intention to use. So, you can’t just come up with a cool name, file a trademark application, and sit on it until someone else is interested. If you can’t show an intention to use the mark in commerce from the start, your trademark application is void.
Do a Few Months Really Matter?
You might be wondering if an intent to use trademark is really worth the added hassle and fees. Keep in mind that you’ll need to pay for the intent to use trademark application, any extension requests, as well as the statement of use once you’ve actually put the mark to use in commerce.
It’s hard to predict if someone will actually take your trademark in the months or years it takes from when you first dreamed of the name to when you’re ready to launch the business or sell the product/service. And it’s tempting to just wait until you actually put the mark in use to file a standard trademark application.
However, the National Law Review cited a story of two hair salon businesses. On December 10, 2011, a Minnesota entity called “Blown Away” filed an intent to use trademark application for the mark BLAST BLOW DRY BAR. However, a Texas business called Blast Blow Dry Bar had filed a use-based trademark application on December 8, 2011 – just two days earlier! As a result, the application from the Minnesotan entity was rejected. Sometimes just two days can make a world of difference.
If you have a great idea for a name, and are already moving forward with plans to launch it into commerce, then the intent to use application can be a great option. Reserve your trademark now, and have the peace of mind that no one else can swoop in while you’re laying the groundwork for your business.
Trademark Photo via Shutterstock
R F Hanson
I applied for an actual use trademark that was rejected because the name was “confusingly similar” to another one. So I did my own survey with random people to see if they would mistake the other business for mine: everyone concurred there would be no mistake that the two businesses could in no way be confused with the other. I received a threatening letter from some trademark infringement troll who later offered to help me get my application approved. This is a good example of how the legal profession intentionally muddies the waters to create an environment to extort fees from small businesses for what should otherwise be legitimate trademarks.