There are two ways to obtain registration of most trademarks:
- An Actual Use Application under Section 1(a) of the Lanham Act
- An Intent to Use Application (or ITU application) under Section 1(b) of the Lanham Act
The Lanham Act is the federal statute governing trademarks, service marks and unfair competition.
An actual use application is for trademarks already in use in commerce. In contrast, an ITU application is for applicants who intend to use their trademark in commerce within 6 months of the filing date of their ITU application.
This intention must be “bona fide”. This means that there must be objective evidence of an applicant’s good faith intention to actually use the trademark, rather than to simply reserve a right in that trademark in the future.
An ITU application provides more flexibility than an actual use application, as well as other key benefits. It also carries risks and costs that an actual use application doesn’t.
Benefits of an Intent to Use Application
Typically, who uses a trademark first determines who has rights to that trademark if there’s a conflict. However, by filing an ITU application for your trademark, and obtaining registration, the date you can claim first use of that trademark is deemed to be the filing date of the ITU application. This is helpful if you filed your ITU application on your trademark before another party began to use a conflicting trademark. Since the date you’re deemed to begin use of your trademark is the ITU application filing date, you’ll get priority in registration over the conflicting trademark should there be a dispute.
Other benefits of an ITU application include:
- Unlike with an actual use application, no trademark specimen is required to be filed with the application. A specimen is a real-world example of how you’re using your trademark on the goods and services you sell. Since no specimen is required to be filed with an ITU application, during the 6 months between the ITU filing and the Statement of Use you must file with the USPTO when you begin using your trademark, you can decide how you want your trademark to look and how you want to use it. This extra time can be invaluable in ensuring that you’re fully prepared when you launch your branded products or services.
- All trademark applications, including ITU applications, are made public by the USPTO when filed. This puts other applicants and potential applicants on notice of your ITU application and your intention to start using your trademark in commerce. This is likely to deter those with potentially conflicting trademarks from using or trying to register them.
- Filing an ITU application provides a sort of “dry run” on the registerability of your proposed trademark by giving you an opportunity to vet that trademark with the USPTO before investing the kind of time and money you might in a trademark that’s already in use. For example:
- Prior to your trademark’s use in commerce, you’ll be able to determine whether the USPTO views it as distinctive enough to be registered (i.e. more than just descriptive of the goods or services you’re selling, or more than just a term commonly used for those goods or services). If the USPTO doesn’t view your proposed trademark as distinctive, you could simply abandon your application for that trademark and choose another without the risk of losing an investment you might have made in a trademark already being used in commerce.
- Sometimes an owner of an unregistered trademark (i.e. a common law trademark) who’s using that trademark in commerce will discover an actual use application for a potentially infringing trademark. The actual use applicant risks registration refusal because of the conflict. But because the applicant is using the potentially infringing trademark in commerce, he/she also risks a lawsuit for trademark infringement by the common law trademark owner. This is not the case for an ITU applicant who, by definition, hasn’t used the proposed trademark in commerce yet and therefore can’t be held liable for infringement.
- USPTO trademark examining attorneys, who are charged by the agency for evaluating the suitability of proposed trademarks for registration, can sometimes be arbitrary in issuing registration refusals. An actual use applicant may have already invested substantial sums to bring the brand represented by the trademark to market in reliance on an expected registration approval. ITU applicants, who haven’t made the substantial investments made by actual use applicants, are insulated from this risk and can choose another trademark for their business should their ITU application be refused.
- An ITU application can help you avoid being a victim of “trademark trolls”. These individuals register trademarks without intending to use them in commerce. Instead, they extort money from companies who have adopted the same or similar trademarks, or who have registered their domestic trademarks in a foreign country, by threatening them with litigation, demanding license fees from them, and/or issuing domain name take-down notices to them. Because trademarks which are the subject of an ITU application have not yet been used in commerce, and the investment associated with actual use trademarks has not yet been made, an ITU applicant is less exposed to this risk; an ITU applicant can simply choose another trademark rather than be held hostage.
Risks of an Intent to Use Application
There are also risks in using an ITU application for your trademark:
- Once you begin using your trademark in commerce, you must file an Amendment to Allege Use or AAU (if your use is before your ITU application is approved by the USPTO for publication), or a Statement of Use or SOU (if your use is after the USPTO issues a Notice of Allowance that your trademark is allowed to be registered). Both an AAU and a SOU must include dates of use of your trademark, a specimen of your trademark showing use in commerce of all the products or services listed in your ITU application, and a filing fee for each class of those goods or services. In contrast, no comparable fees are needed for an actual use application.
- Within 6 months of receiving the USPTO’s initial approval of your ITU application, you must be able to prove that your trademark is being used in commerce. This deadline can be extended for up to 3 years (in 6-month increments) for good cause. Proving “use in commerce” means a showing that all goods or services listed in the ITU application are actually for sale, or have been sold. If you can’t prove use in commerce within the 6-month deadline (as extended), your trademark application will be deemed abandoned.
- Unlike an actual use application, you can’t assign an ITU application until after an AAU has been filed, except to someone who has acquired all of your business, or that part of your business “to which the mark pertains, if that business is ongoing and existing”. Because there is no goodwill associated with a trademark that isn’t in use yet, separate and apart from your business, a trademark which is the subject of an ITU application is essentially valueless as an asset.
- Although an ITU application is appropriate if you believe that you haven’t used your trademark across state lines, you should be aware that businesses that serve consumers from other states (e.g., restaurant services, tourist services) are deemed to be involved in interstate commerce, even if those consumers are only being served in your state. As such, you will need to file an actual use application for trademarks associated with such businesses.
- An ITU application isn’t appropriate if you have a descriptive or otherwise weak trademark. This kind of trademark should be put into actual use so that it’s able to acquire distinctiveness and thereby become registerable. When it does, you can file an actual use application for its registration.
Consult an Attorney for Guidance
Deciding whether to file an ITU application for your trademark involves weighing the benefits and risks outlined in this post. If you have questions about how to proceed, contacting a trademark attorney can provide the guidance you need.
Becker Law LLC provides trademark registration services for freelancers, startups, and small or medium businesses. If you're interested in customized legal services with transparent pricing, contact us today.