Intent to Use Applications

Here is a quick breakdown of filing
your trademark on an intent-to-use basis:

In a Nutshell

You can lock down rights to a trademark in advance before you launch by filing your trademark on an intent-to-use basis. This is basically the same as a regular trademark application, except you don’t have to prove public use of the trademark in connection with your offerings at the time of filing. This is a great way to secure the trademark in advance before launching, subject to paying a little more in government fees for the benefit.

The Details

  • Establish Priority - When you file your trademark on an intent-to-use basis, your priority to the trademark is stamped as of the date of filing. This means if you anyone else tries to start using a similar trademark in connection with similar offerings after you file, you may be able to stop them.

  • Additional Fee - This type of application requires an additional $100 in government fees per class per application. This is due later when you file to prove public use of the name. There may be some additional legal fees in connection with this filing as well.

  • Time to Show Use - After filing the application, you will have about 4 years to show public use of the trademark to finalize the registration. Specifically, the USPTO will take about 1 year to process your application. Then, assuming it is approved, the USPTO will give you a “notice of allowance”, which gives you a 3 year window to show public use of the trademark to finalize the registration.

  • Extensions - During that 3 year window, every 6 months you have a deadline to either show public use of the trademark in connection with your offerings, or file an extension. Extensions currently cost $125 per class per application in government fees, and there may be additional legal fees for the filings.

  • Showing Use - To finalize an intent-to-use application you will need to show that you are:

    • (1) publicly using the trademark exactly as you filed it,

    • (2) in a trademark capacity (like as a clear brand, slogan or product name on your website marketing and sales pages and/or product tags, not just in passing copy, or in a decorative use, like on the front of a t-shirt),

    • (3) in connection with the offerings that you filed under, and

    • (4) those offerings must be clearly actively available for sale to the public.

  • Once you have that established, you can finalize your approved application with the USPTO. We can of course handle this filing for you.