An intent-to-use (ITU) trademark application filing basis buys extra time to start using a mark in commerce, ideally maintaining priority over any similar marks seeking registration. This doesn’t mean the mark can be registered before it’s in use—it can’t. But having an earlier filing date can be extremely beneficial throughout the life of your trademark.
Below, we discuss the benefits of filing a trademark as intent-to-use and explain some important filing tips.
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Benefits of Intent-to-Use Trademark Filing Basis
In order for the United States Patent and Trademark Office to register a mark, the mark must already be promoting the goods/services it’s associated with. In addition, those goods/services must be for sale. This means you can’t register a trademark as use in commerce if you plan to start using it months or years from now—the mark must be in use today, and the use must be proven with examples that accompany your application.
Another rule of federal trademark registration is that the first application filed is the application given priority status. Having priority is important. If two competing trademark applications are filed, whichever has an earlier filing date will rule the day. (Assuming it’s ultimately granted registration.) Waiting to file until your mark is in use can leave room for another applicant to sneak ahead to registration.
Enter the benefits of intent-to-use filing basis:
- More time to start using the mark in commerce while earning an earlier filing date.
- If trademark infringement occurs, having a filing date that’s earlier than an infringer’s can provide a legal advantage.
Interested in filing a trademark with an intent-to-use basis? Sign up for our Trademark Service and we’ll get you squared away.
Filing an Intent-to-Use Trademark Application
An intent-to-use trademark filing basis has key differences from filing as use in commerce. You’ll use the same application to file, but here’s how the process diverges:
- Select “1(b) Intent to Use” when the application asks you to designate your filing status.
- Don’t include any specimens with the application.
- Submit specimens, additional paperwork, and fees in the coming months.
After filing an ITU, your specific fee and paperwork requirements will vary based on how long you want/need to maintain intent-to-use status and how many classes you file under.
How long does intent-to-use filing status last?
How long you maintain an intent-to-use filing basis status depends on when you claim use in commerce. You have several options:
- Before your mark is published
About 7-10 months after your application is filed, the USPTO will publish your mark. (USPTO timelines are in constant flux. Check out their current trademark processing data.) This opens the mark up to a 30-day period where people can submit oppositions to the mark’s registration. Prior to publishing, you can claim use in commerce by filing an Amendment to Allege Use.
- Six months from Notice of Allowance date
The USPTO will issue a Notice of Allowance if no valid objections to your mark occur during the opposition period. The Notice clears your mark to continue down the registration path. You have six months to file a Statement of Use from the Notice issue date.
- Extension requests
If you need more time to prove your mark’s use in commerce, you can submit Statement of Use Extension Requests. Each request is for a six-month extension, and you can request up to five. If you request (and are granted) all possible extensions, you can maintain Intent-to-Use status for more than three years.
How much does filing a trademark as intent-to-use cost?
Intent-to-use filing costs vary based on how much time you need before proving use in commerce. The initial costs to file are the same as if you submitted an in-use application: $250 per class for TEAS Plus, or $350 per class for TEAS Standard.
If you file a Statement of Use or Amendment to Allege Use within their standard timelines, you’ll pay $100 per class for those filings. If you request extensions, you’ll pay an extra $125 per extension, per class.
Intent-to-Use Trademark FAQs
Should I file a trademark as intent-to-use?
Whether or not it makes sense to opt for intent-to-use filing basis depends on a few factors. The first factor is whether your mark is currently in use. If your mark is already being used in connection with the goods/services it’s promoting, then there’s no need to file intent-to-use. If your mark is not yet in use, then there are three questions to consider:
- When do you plan to begin using the mark?
- Is it important to you to preserve an earlier filing date?
- Are you willing to pay additional fees?
If you plan to use your mark in the coming months and a timely date is important to you, then intent-to-use might be worth pursuing. But every situation is different. With Northwest’s Trademark Service, our attorneys are ready to learn about your trademark needs and help you move in the best direction.
What is “bona fide” intent to use?
When you file a trademark application as intent-to-use, you must assert that you have a “bona fide” intention to use the mark in commerce. This assertion tells the USPTO that you plan to use the mark in (relatively) short order.
What is the intent-to-use trademark timeline?
The amount of time it takes for an intent-to-use trademark application to reach registration is hard to predict and full of variables. (The USPTO provides the world’s most confusing chart in response to this timeline question.) If you plan to file a Statement of Use without extensions, you should expect the process to take at least a year. However, there’s plenty that can slow the process down. For example, if substantive office actions are filed, plan on waiting longer.
If you instead file an Amendment to Allege Use (which is due prior to the issuance of the Notice of Publication), the timeline would be the same as if you’d filed an in-use application.
What if I miss the deadline to file a Statement of Use?
If you miss the deadline to file a Statement of Use, and neglect to file a request for extension, your application will be abandoned by the USPTO via a Notice of Abandonment. You can request application resuscitation by filing a Petition to Revive (within two months of the Notice issue date) and paying a $150 fee. You’ll also need to pay any applicable Extension Request fees, and of course your Statement of Use paperwork and fee will still be due.
*This is informational commentary, not advice. This information is intended strictly for informational purposes and does not constitute legal advice or a substitute for legal counsel. This information is not intended to create, nor does your receipt, viewing, or use of it constitute, an attorney-client relationship. More information is available in our Terms of Service.