Understanding the Difference Between Actual Use and Intent to Use Trademarks

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The United States Patent and Trademark Office (“USPTO”) requires use of a mark in commerce in the United States before the mark can be registered. When the Lanham Act (the federal law that covers trademarks) was enacted in 1946, this “actual use” requirement was not popular with everyone. For example, many companies were reluctant to invest the significant amount of capital required to launch a product under a brand name that may or may not be eligible for trademark registration.

As a work-around, many would adopt a mark, use it just enough to qualify for protection by selling a “token” number of products bearing the mark, file a federal trademark application, and then await the results from the USPTO before committing to a full launch. It was not until 1988 that Congress amended the Lanham Act to allow for a new type of application to address the needs of those who wish to have approval from the USPTO before investing in developing a brand.

That application is an “intent-to-use” application, also known as a 1(b) application (after the Lanham Act section in which it appears). In an intent-to-use application, the filer requests a mark for certain goods or services and then certifies to the USPTO that it has a “bona fide” intent to use the mark in commerce in the near future. “Bona fide” is not defined in the Lanham Act, but it is generally understood to mean “shown by objective evidence of circumstances showing good faith.” No dates of first use or specimens are provided because the mark is not yet being used in commerce.

An actual use application, also known as a 1(a) application, is an application where the applicant is currently using the mark in commerce to identify the source of the goods or services that are specified in the application. With this application, a specimen of use and a date of first use in commerce for each class is required to be filed with the application.

The application fees for 1(a) and 1(b) applications are identical. Both applications are then reviewed by an “examining attorney”, which is the title given to trademark examiners. If the examining attorney approves the mark, the application will proceed to publication in the Official Gazette for 30 days, during which time interested parties can file oppositions to the application.

After successfully clearing the publication phase without opposition, the two types of applications diverge. Actual use applications that come out unopposed head to registration. Intent-to-use applications, on the other hand, have a few more hurdles to pass before getting to registration.

After the opposition period has ended for an intent-to-use application, the examining attorney will issue a Notice of Allowance. It tells the applicant that the application has been approved, but until the mark is actually used in commerce on the goods or services specified, the application cannot mature into a registration.

In order to prove actual use of a trademark, the applicant must file a Statement of Use (which must include at least one acceptable “specimen of use”) and provide the date when the mark was first used in commerce. Additional fees are required when a Statement of Use is filed. Once the Statement of Use is accepted, the application will mature into a registration.

Applicants filing an intent-to-use application end up paying more in the long run – both in application fees and legal fees – but they also get their foot in the door of the PTO earlier than if they waited until the mark was being used in commerce. One of the most common questions I am asked is whether to spend the extra money and file on an “intent to use” basis, or wait and file on an “actual use basis” to save the extra fees.  My rule of thumb is to file as early as you can afford to do so. If you would like to discuss trademark strategy, please contact The Law Office of Chris Clark.

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