by Chelsea Kaminski
When a trademark application is filed based on “intent to use,” it means the trademark is not in use when the application is filed, but the owner intends to use it in the near future. Once the application is reviewed by a USPTO examiner and given preliminary approval, it will publish for opposition in the public records. When the opposition window ends, if the mark is unopposed, the Examiner will issue a Notice of Allowance. At this stage, the applicant has six months to either: (1) provide evidence of use that the mark is being used in commerce; or (2) file an extension for an additional six months of time to show use of the mark.
Evidence of Use: To meet the USPTO’s requirements, a mark owner will need to confirm that the trademark is being used in commerce and provide evidence showing the mark being used as a source identifier of the goods and/or services in the application. Evidence to show use of goods typically includes using the mark on a hangtag, label, product packaging, point of sale display, or on the goods themselves. Evidence to show use of services may include websites, ads, brochures, marketing materials, or store displays that use the trademark to promote the services.
When preparing evidence of use, trademarks should be featured prominently, presented in a large font, and in a standalone fashion (not used in the middle of a sentence or other wording). If using a website as evidence of use for services, common places to display a trademark are in the header and/or footer of the web page. It is key to ensure that the usage (spelling, spacing, etc.) matches the trademark exactly as it was applied for. For more examples of ways to show use of the mark, please see our Specimens webpage.
Extensions of Time: If the Notice of Allowance deadline is approaching and the owner is not using the mark in commerce yet, an extension can be filed. An extension will allow the mark owner six additional months to meet the requirements for use in commerce and costs $125 in USPTO fees (per class). Five extensions are available following the six-month period after the Notice of Allowance issues. This means that from the date the Notice of Allowance issues, the owner will have three years in total to show use of the mark if all extensions are filed. If the mark is still not in use at the end of the fifth extension period, the trademark owner must file a new application to continue pursuing protection for the mark.
Given the complexities of responding to a Notice of Allowance, it is best to work with an attorney to ensure the use in commerce requirements are met. If you have any questions or need help regarding a Notice of Allowance, please reach out!
For more resources from our firm on intent to use applications, please see the links below:
