Under the US trademark law, there are two main types of trademark applications and those are ones based on use of a trademark in the commerce, meaning that the goods or services associated with the mark are actually being sold and advertised to members of the public. And the second type of application, which is called an intent to use application. These are also in trademark lingo referred to as 1(b) applications because they’re under section 1(b) of the statute. On a high level, the biggest distinctions between an intent to use and a use-based application are that when you file with an intent to use, it’s exactly that: you’re not yet using the mark. You are indicating that when you file it you have a legitimate bona fide intent plan to make use of this mark with the goods and services identified in the application.
By contrast, when you file a use based or section 1(a) application, you actually provide evidence of the use and you sign a declaration stating that you are and have been using the trademark in commerce with those goods and services since a particular date, which you also identify in the application.
“Intent to use” applications are relatively new; they were first put into law in the United States in 1988 and the reason for this is because the US is maybe the only country in the world that requires you to actually be using a mark before you can get a registration. In other countries you file and just the act of filing can reserve a trademark even for you start using it. But here we’re kind of sticklers on that in the US, so it created a problem. Basically before intent to use applications were available, it was hard to go reserve rights for a trademark until after you’ve gone through all of the investments to develop your product and put all your marketing materials together and actually got the product out into the stores and on the shelves.
And at that point you’d file your trademark application. Well what if you run into a problem there? What if there’s a dispute there? What if someone beats you to the trademark and you’ve got to then relabel all of your products and change all of your brands? It’s much safer and much easier to be able to make sure you’ve got rights to a mark and then make all your investments, but that wasn’t really an easy option before. What people did sometimes before was thus make “token” uses, which they put the mark on a few products and sell just a few of them and then claim that that was their use and then make sure that works out before doing other things. That’s not permitted anymore and intent to use applications were introduced into US trademark law so that people wouldn’t have to do that.
So now you can file your application before you make all those investments. Applicants can make sure that it can be a valid trademark, make sure that other people don’t have a problem with it being registered. And then after that, after you know you are going to have rights to this once you put in use, then you start investing in all of your new products and new brands and new commercials and then it becomes a lot safer. It also brings us in line with a bunch of international treaties. It makes our system a lot more compatible with the systems in other countries where they don’t have this problem because they just could always just file an application without using the mark. “Intent to use” filing became a excellent option following the 1988 amendments to go out there and safely invest in a new brand and launch a new product.
What are the benefits of an “intent to use” trademark application? The primary benefit is that as soon as you come up with a plan to use a mark, you can start the process of registering it and getting protection for it and making sure that it’s available to be used and that you can own the rights to it. So for example, in the car manufacturing business it takes years to plan and launch a new model of car with the engineering and the safety and the testing and the car shows and so many cars of course that are exhibited at car shows never come to fruition. But the car companies are a great example of somebody who takes wide advantage of these intent to use applications because they can file to begin registering a mark and securing rights as soon as they’ve come up with the name, and it gives them the flexibility to know that they’ve secured the rights to it, or at least established a priority date as of the date it was filed, where nobody else can come up with a similar name for a similar product and beat them to the punch.
Beforehand, they would’ve been operating sort of in the dark for several years coming up with this new product and if at any time somebody else who was operating in the dark launched a product with the same name, all of that work they would have put into the name would be for nothing because they wouldn’t have really had any rights to it. Now all they do is they file an intent to use application as soon as you’ve got a real plan to use the name and you’ve made it public to the world, you start establishing rights and when you do eventually get a registration or come in conflict with another trademark potentially, your rights generally will date back to that filing date, which is referred to as your priority date. And you’ve got a pretty firm record of that because it’s the day you file at the USPTO.
Another benefit of filing with the USPTO as early as possible is to show up in the USPTO database. That’s what many companies, law firms, etc, are looking at when they come up with new names, advise clients about new names and whether or not a mark is viable to potentially move forward with. If you’re in the database, other people who may be thinking about doing something similar may automatically cross that name off that list and you may avoid conflicts without ever even knowing about it just because you are in the database and that gave you these rights and this priority and other people found out about it. If there’s no public filing and all you’re doing is working internally to launch a product, a brand name, nobody else can reasonably be assumed to know about it. And so your rights are very, very limited if any, unless you file an intent to use application. If you are developing a brand and haven’t filed yet with the USPTO, competitors can’t even try and avoid you because they don’t know.
And also from a practical standpoint, if you do file and there is a conflict, either you are now in the public record and you receive a cease and desist letter from somebody or the US patent or trademark office rejects your application, it gives you more time to try to work these things out while there’s a little bit less at stake because you are not yet fully committed, fully invested in the name or even allows you to sort of back up and maybe change the name if that makes the most sense legally and practically. So it gives you more options, more flexibility rather than declaring, okay, we’re using this, we’re sort of all in with this brand name.
If you discover that there’s a problem after you’ve already begun using a mark in commerce, it’s a much bigger problem to negotiate or find a way out of because you don’t have as many options or they’re much more expensive options to change the marketing, repackage things. They’re much more expensive both financially and practically. And in terms of the burden on your customers and on your business performance potentially.
Some cautions that applicants need to be aware of when making “intent to use” applications. This distinction between a use based application and intent to use application means there are different requirements and there are serious consequences if you get it wrong. But the first most important thing is an intent to use application, like I said, the availability of intent to use applications doesn’t mean you can get a registration before you’ve used a mark. You still, in the US, don’t have a registration until you’ve actually used the mark. The intent to use application just provides you this opportunity to conditionally set a date that you have rights leading back to if one day you do put the mark into use. If you never get around to it or you don’t get around to it within the maximum three year time period, then you won’t have any rights.
An “intent to use” application is not generally something you can assert against somebody else. You’ve still got to use it to get a registration.
How the “intent to use” application works at the USPTO. There are some additional fees with an intent to use application. Basically the way it works is you file the application and like a use based application, it gets examined by the examining attorney and if everything is fine it gets published for opposition and if no problems come up there then they issue what’s called a notice of allowance and from that point you’ve got six months to put that mark in to use it or demonstrate that use to the USPTO to make it mature into a registration. If you don’t have it done within those first six months, you can extend it another time. You can get another six month extension and file for six month extension after six month extension, but you’re limited to five and that gives you only three years to get it done.
Each extension costs $125 (currently, as early 2020) per Class and when you ultimately do allege use, it’s going to be another a $100 per Class of goods of services. So if you have an application with lots of different goods and services in it, it’s going to be lots of different fees, especially if you have to extend it over and over again. And then finally, it’s really critical that you, I mean a hot issue now is challenging people’s what’s called “bona fide” intent. You have to have a real intent to be putting that mark that you’re applying for into use in the required time period. And that means you have to be taking real steps as well. Making plans and documenting those plans. If somewhere down the line someone challenges you on that, you need to be able to demonstrate that in order to make sure you’re covered and you won’t lose your application.
A common mistake is filing a use-based application when the applicant should be filing a intent to use application. If you haven’t used the mark, you can’t file a use based application. And all those things are sometimes complicated and sometimes have consequences for either delays when you’re dealing with the USPTO or could undermine the legitimacy of your registration or even your application.
In summary, the intent to use system is a great way for reserving rights. It helps make sure that your mark is cleared before you’ve had to make those serious investments to launch your product on full scale. But again, it’s complicated, and it is important to get right. For that reason, we highly recommend using an attorney, as making sure which application process is right for you is critically important. And an attorney who’s experienced with trademark law is going to be the best person to help you figure that out.