Intent to Use

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Intent to Use

Intent to use applications are perhaps the most widely used form of applications filed by corporate applicants.  The advantages of making an intent to use (ITU) filing are that it allows the prospective trademark owner to essentially reserve or preserve the rights to use a mark in commerce that they have not yet used.  This is important because a significant amount of resources in terms of investment in product, service, research, design and advertising may be expended well before the mark is actually used in the marketplace.  It allows (on average) approximately three and a half to four years between the time the intent to use application is filed and the final deadline for filing the statement of use.  As previously discussed, registration of a trademark will not be granted until the mark is actually used in interstate commerce and a statement of use is filed by the applicant with the USPTO.

In the case of an intent to use mark in addition to the selection of the actual desired trademark, a description of the goods or services to be provided under the mark must be submitted.   There are 42 different international classifications of goods and services listed with the United States Patent and Trademark Office and when entering a description of goods and services, the classification must also be entered. 

Additionally, in contrast to the laws under most foreign nations, trademark rights in the United States are gained through use of the trademark in Interstate Commerce.  In many other nations, rights to trademarks may be gained solely through the process of registration.  This has been a particular problem in China, as “squatters” have registered the famous trademarks of others allowing squatters to extort funds from trademark owners for the rights to use their own trademark in that jurisdiction.  In the United States however, a domestic trademark may not be registered until the mark is actually put in use in Interstate Commerce.  Applications may either be filed based upon a bona fide intent to use the mark in commerce (“ITU”), or based on actual use in commerce (“USE”).  Although an ITU application gives the applicant a constructive date of first use as of the application date, the mark may not be registered unless and until it is put into use in Interstate Commerce.

The definition of use in commerce may be found in TMEP §901.01.  Essentially, use in commerce means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. 

  • A mark is deemed to be used in commerce on goods when it is placed in a manner on the goods or their containers or their displays associated therewith or on their tags or labels affixed thereto and if the goods are sold or transported in commerce.
  • A mark is deemed to be used in commerce on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.
  • Use in commerce requires that the mark is used in more than one state or in one state and a foreign country.  A trademark application with the USPTO requires that the applicant provide the date of first use and the first date of use in interstate commerce.  These dates may either be different or the same depending on the circumstances.

Application based on use.  Essentially an application based on use is identical except for the fact that an allegation of use in interstate commerce will be filed at the same time the application is filed and that instead of a notice of allowance, a registration certificate will issue upon successful completion of the process.