Distinguishing Between Intent to Use and Actual Use
Intent to Use: This type of trademark application is filed with the United States Patent and Trademark Office “USPTO” before you actually start using a mark or offering services associated with the mark.
Actual Use: This type of application is filed with the USPTO after the first use of the service mark in connection with advertising or marketing of the services or goods to the public. In essence, the mark is actually being used in interstate commerce.
So Should You File an Intent to Use Application?
If you haven’t started using your mark yet and want to file an intent to use trademark you may file an application on the basis of intent to use. The caveat is the mark must be used within six months. If you’re unable to use the mark within that six month, you may purchase an additional six month extension. This can be done in increments of six months until a maximum of three years, if you are able to convince the USPTO that you have a valid reason for the delay. Also, note that your trademark will not be registered until you have filed an additional document with the USPTO when your mark has been put to actual use.
Is There Any Benefit to Filing an Intent to Use Trademark?
The most common benefit to filing an intent to use application is that the filing date of your application will serve as the date of first use- if you put the mark to actual use later on and take the required action to register your federal trademark.
It is important to file an intent-to-use application as quickly as practicable since you will be afforded the priority date as of the date the application is filed once the mark is later put to use.
Is There Any Disadvantage to Filing an Intent to Use Trademark?
Just like with most things there is always an advantage and a disadvantage. In order to file an intent to use application, you have to spend $100 more than an actual use application. Additionally, you will spend $150 for each request for extension you make. Therefore, it makes sense to only file an intent to use application when you have done a comprehensive search to determine that your mark is truly distinctive and you do plan on using it within six months.
Abandonment of Intent to Use Application
If you legitimately intend to use your mark, it is in your best interest not to abandon the mark or the application process. If you abandon the process, you are opening the door to allow another business that starts using the same or similar mark have first priority as the owner of the mark. Nevertheless, if you complete registration, you will have first priority and can make a claim of ownership based on the original filing date of your intent to use as your first use date.
At The Chidolue Law Firm, we offer Federal Trademark Application and Advisory services and will be happy to assist you with your Federal Trademark needs. Please contact us at firstname.lastname@example.org or call us at 407-995-6567