What is an intent to use filing in United States trademark law?

A trademark is a symbol that tells consumers who produced a product. The purpose of a trademark is to prevent consumer confusion. Trademarks are intended to protect consumers from low quality copies of high quality goods. Trademark law grants the user of a trademark several exclusive rights. One of the rights granted by trademark law is the right to prevent other people from using a trademark. Trademark law is based on common law rights. These rights are typically granted the moment that the user of a trademark sells goods in the market place. Trademark rights can be given additional strength by registering the trademark with the United States Patent and Trademark Office.

Registration of a trademark with the United States Patent and Trademark Office is not required before a trademark is used in commerce. Use of a trademark in commerce is the event that creates common law trademark rights. But to register a trademark with the United States Patent and Trademark Office, the trademark must be in use in commerce or the trademark user must file paperwork which says they intend to use the trademark in commerce.

To state that another way: to register a trademark in the United States, the trademark must be used in commerce at the time the trademark application is filed, or the trademark user must file an intent to use trademark application. An intent to use trademark application states that the trademark user has not used the trademark yet, but they intend to use the trademark soon.

The advantage of an intent to use trademark application is that the trademark user who files a trademark application first, has priority over people that file later trademark applications.

To use an intent to use trademark application, the trademark user must file a sworn statement that the trademark user has a good faith intention to use the trademark in commerce. The sworn statement is intended to weed out people that merely want to squat on trademarks, with the intention of demanding large fees from good faith trademark users. If another person takes legal action to prevent your mark from registering, that person may question your good faith. It is important to document your business plans so you can demonstrate your good faith intention to use a trademark.

Once a trademark user’s intent to use trademark application has been filed, the trademark user must demonstrate actual use of the trademark. There are four key periods that a trademark user must be mindful of:

The time between the application filing date and the trademark publication date – if the trademark is used in this time the trademark user can file an allegation of use statement to demonstrate actual use of the trademark;
The time between the publication date and the notice of allowance date – the United States Patent and Trademark Office will publish the trademarks to give the public an opportunity to object to a trademark, if no one objects in that time period then the trademark will be allowed. The time between publication and allowance is known as the blackout period, use of the trademark in time time period cannot be used as evidence of actual use;
Six months after the notice of allowance – after the notice of allowance for a trademark is filed the trademark user can file a statement of use to demonstrate actual use of a trademark. The trademark user must remember to file the statement of use, or file for an extension of time. If the trademark user files to do something within six months the trademark application will be considered abandoned.
After an extension of time – the trademark user can request extensions of time to file a statement of use.

Using a trademark in commerce is a key point of trademark law. If you have questions about filing an intent to use trademark application it is best to consult with an experience trademark attorney to protect your interests.

If you have questions of comments for the authors of this blog please email us: admin@uspatentlaw.cn