You have a business idea, you even have the perfect name, slogan, or symbol to represent the brand, and you are eager to protect the brand name so that no one else gets to use it before you are ready to start business with it. You have a registered business name, but this is more than a business name, it is going to be your source identifier, something that tells people that the goods and services they are patronizing are coming from your business. The problem is you just need a little time to iron out all the details for this new brand idea. You’re not ready to offer goods or services to the public just yet but you don’t want to lose the brand name. Can you go ahead and secure the brand with a trademark? The answer is… it depends! (I’m sure you expected that answer. The tuition for my law degree would be a complete waste if I didn’t find a way to throw in those two words once in a while)
Intent-to-Use Application
When filing a trademark registration application, you must specify the basis for your application. You can either file on the basis of a use-in-commerce or an intent-to-use. If filing on a use-in-commerce basis, it means that the mark is already in use. You are already conducting business with the name, and you must show the USPTO the date the mark was first used anywhere, the date it was first used in commerce, and how the mark is used.
An intent-to-use basis on the other hand is based on future use. But it’s not just a file it and park it deal like you can do with a domain name. You must show the USPTO a good faith, bona fide intent to use the mark. The USPTO says, “a bona fide intent to use the mark is more than an idea and less than market ready.” I’ll try to get into what that means because it could mean the difference between having the name on the register and having it cancelled.
If your intent-to-use application is accepted, you get a Notice of Allowance, which essentially holds your place in time while you get your house together, so to speak. The Notice of Allowance basically gives you the green light to proceed with the mark on your application. It gives you notice that when the USPTO receives proof of the use of the mark in commerce, through the filing of a Statement of Use, your mark will be fully registered.
What is the Advantage of an Intent-to-Use Trademark?
You might be wondering why some businesses bother with the intent-to-use application when they are not fully ready to enter the market with the mark. A successful intent-to-use application holds your place in time. Dates are very important in trademarks. Having an earlier filing application date gives you priority over any other business with the same or similar mark that files at a later date than you. You may believe that your mark is unique to you, but you never know. It’s better to avoid surprises, anticipate legal conflicts, and take preemptive action by filing on an intent-to-use basis.
How Long Does the Intent-to-Use Last?
If your intent-to-use application is accepted, you will receive a Notice of Allowance which gives you time to file your Statement of Use and put your mark in the trademark register. However, there is allowance for the fact that things don’t move as smoothly as we anticipate in business so there is allowance for extensions to file the Statement of Use. In total, you have a total of 36 months from when you receive a Notice of Allowance to file your Statement of Use. However, extensions are given in 6-month increments. So if you find that things are not going as planned and you need an extension, you must file before the expiration of the term of your Allowance. To receive an extension, you must show continued efforts to use the mark such as creating prototypes of goods or soliciting for members or subscribers of a service, or conducting market research.
How Do I Show “Bona Fide” Use of the Mark?
To be allowed into the intent-to-use anteroom, you must show the USPTO a bona fide, good faith intent to use the mark. It is important to know what constitutes a bona fide intent to use so that you know whether your business is ready or not to approach the USPTO. Some of the things that can show a bona fide intent to use a mark include having a business plan and a marketing plan, creating sample products, leasing equipment necessary to operate the business, or performing other initial business activities that reflect a bona fide intent to use the mark.
How Do I Establish Bona Fide Use in Commerce?
To get on the register of trademarks after receiving a Notice of Allowance, you must file a Statement of Use Claim to show the USPTO that the mark is in use in commerce. Activities that show a bona fide use in commerce include developing a comprehensive public relations campaign, creating and distributing brochures or newsletters using the mark, presenting to potential customers, and publicising the mark through media interviews or advertisements.
Essentially, you must show use of the mark in a public way, not just amongst a limited number of friends and family, to identify or distinguish the goods and services associated with it.
The business must have sold goods or provided services to an outside person, someone not associated with the business. Use of the mark must be sufficiently public for it to get trademark protection. And the use must be what is considered a legitimate commercial purpose, not just use that is merely for the purpose of reserving a right in the mark.
Can You File a Trademark Application Without an Attorney?
The simple answer is yes, if you or your business are resident in the United States. I understand that when you are starting out in business, funds are tight and you want to DIY as much as possible. However, it’s best to use qualified attorneys to help you set up the essential pillars of your business, one of which is your intellectual property. The USPTO allows non-attorneys (in the US) to file their trademark applications, but it will serve you better to have a trademark attorney handle your application from the start. There are several reasons for this, chief of which is the fact that the trademark application process can get quite technical and may require some back and forth between the applicant and the USPTO to resolve questions they may have. So, it is better to use an attorney who speaks the language of the USPTO to handle your trademark application.
