A US trademark application can be generally based on use in commerce or a “bona fide intent to use” the mark in commerce with the goods and services featured in the application. (Note that a US application can also be based on a foreign application or registration, but these are much more rare than “use” and “intent to use” applications.)
When an application is filed based upon an “intent to use” the mark with the goods and/or services, if it meets all the other procedural and substantive requirements for registration, proper evidence of use must be submitted before the registration process can be completed.
There are many benefits to filing an “intent to use” application – it allows the trademark owner to file as early as possible and begin preserving rights in the trademark and putting the public on notice regarding a new name, logo, or other trademark that it plans to use. If a business is planning to use a name, but does not file to protect it with the USPTO until sales begin, someone else could come along and begin using a similar name, or file with the USPTO, during the pre-sales period and potentially usurp any rights to the name. The launch could then need to be re-done (likely with a considerable expense and delay) or use of the name could be quite risky as it may not be unique and may even expose the user to a potential claim for infringement.
A necessary part of completing the “intent to use” application is the filing of the evidence which may be called a Statement of Use or an Amendment to Allege Use (“AAU”). The allegation of use has the following main elements:
- specimen showing use of the trademark in connection with the relevant goods or services
- the dates the mark was first used in commerce and first used anywhere
- a proper signature on the declaration
An allegation of use could be submitted on paper or electronically. Below is an example, from the USPTO public records, of an electronically filed Allegation of Use.
While you can file a trademark application – and begin getting some protection – before using it, provided you have a “bona fide intent” to the trademark in commerce with the goods or services in the application, the application process cannot be completed unless all the requirements for registration are met including the submission of acceptable evidence of use.