Owning a federal trademark registration provides the ability to exclude others from using a certain word or design in association with specific goods or services. In the United States this exclusivity of rights, however, can also derive from actual use in commerce without a federal registration. In this case, it is critical to pinpoint the earliest date of use in commerce in order to prove to be the first to have used a certain mark in connection with specific goods or services. Because claiming the earliest date is critical in trademark law, it is important to know that it is possible to secure a date of priority through an Intent-to-Use (ITU) application even before the business is ready to use (and prove that it has done so) the mark in commerce.
This is part of a two-post series which aims to analyze the pros and cons of filing an ITU application, highlighting key factors to consider when deciding to file a new trademark application.
This particular post will address the advantages of an ITU application.
Specimens of Use
With actual use applications, the USPTO requires that the applicant provide a specimen, called a “Specimen of Use”, to prove that the mark is actually in use in interstate commerce in relation to the goods or services listed in the application. This is essentially a real-world example of how the mark is used on the specific goods or services which, for new businesses, might be difficult to provide.
An ITU application, however, does not require the submission of a Specimen of Use upon filing – which allows the applicant to secure the earliest priority date possible, while continuing to develop and finalize the product and use of their mark.
The applicant has a six month window to provide the Specimen of Use, which can be extended up to five times in six month increments – for a total of over two years. However, each extension is subject to an extension fee.
Potential Lower Risk Approach
It is problematic, and frustrating, for applicants who file actual use trademark applications to find out that the USPTO refuses registration of their trademark. It is frustrating because for actual use applications, applicants have already invested time and resources in selecting, finalizing, and marketing their trademark – only to find out they will not be able to obtain a registration for their trademark. Conferring with counsel before filing use applications is a good idea in order to help determine whether the use is legitimate or whether there may be substantive issues with the applied-for-mark in general.
If there are potential substantive issues, an ITU application may be advantageous in that it will undergo the same examination process as an actual use application, which allows the applicant to find out whether the USPTO identifies substantive issues (confusion, descriptiveness, etc.) barring registration before spending considerable time and resources in branding products with a trademark that may never obtain a registration. If such substantive refusals are raised against an ITU application, it is easier to abandon the application and simply rebrand and refile. If not, the application can be converted to a use application upon provision of a legitimate Specimen of Use.
Trademark Litigation
In addition, filing an ITU application may be an unexpected shield against trademark litigation. When filing an actual use application, the applicant declares that – as of the date indicated in the application – the mark has been used in commerce on the goods or services listed in the application. This can be the basis for a prior user (one that may only be using the mark in commerce but did not obtain a registration) to file a trademark infringement suit against the applicant. With an ITU application, the applicant simply declares its intention (as opposed to actual use) to use the given mark in connection with the applied-for goods and services. This does not provide prior users with any actual use information that can be used in a trademark infringement lawsuit.
Public Notice
As discussed above, ITU applications undergo the same examination process as actual use applications and are also subject to equal publicity requirements. It is easy for prospective applicants to verify whether an application for a similar mark is currently pending examination, which may deter other applicants to apply for the same mark.
The advantage of public notice also brings a reduced risk of the so-called “trademark trolls”, entities that speculate over trademark registrations. Such actors generally register trademarks without the intent of actually using the mark, but rather to attempt to extract resources from companies that would actually be interested in obtaining a registration for the given mark. An ITU application signals that no use has been made of the mark yet, and therefore there is a lesser chance that the applicant may be inclined to give in to the unreasonable demands of trademark trolls if it would be easier to abandon the application and rebrand.
