In today’s issue, we answer one of the most frequently-asked questions we receive:
What is the difference between an INTENT-TO-USE APPLICATION and a USE-BASED APPLICATION?
We answer your question here! This is a lot of information to digest and demonstrates the complexities of the application process but we have good news! That’s what we are here for – to help you navigate this complicated legal process.
A federal registration grants the trademark owner substantial benefits and more expansive rights than are available for an unregistered mark under the Lanham Act or state law. Choosing the right filing basis for your trademark application is important and submitting the correct information to the United States Patent and Trademark Office (USPTO) helps to eliminate filing omissions and other mistakes that can lead to costly delays and a loss of priority over competing trademarks.
Intent-to-Use Applications
If you have not used your trademark in commerce, but have a good faith intention to do so in the future, you can file an application to register your trademark under an intent-to-use (ITU) filing basis. Although you don’t need to use your trademark in commerce before filing an ITU-based application, you must show actual use of the your trademark in commerce before your trademark is allowed to register. Use is a prerequisite to registration.
One of the greatest benefits to filing an ITU application is that you can file before you actually sell a single product which means you can get an earlier filing date than a potential competitor. This is important if a conflict arises!
What does use in commerce mean?
“Use” or “use in commerce” in the context of trademark applications means commerce that can be regulated by U.S. Commerce.
- A trademark is in use in commerce with goods when (1) the trademark is placed on the goods, packaging for the goods, or point-of-sale displays associated with the goods (including webpage displays), and (2) the goods are actually being sold or transported in commerce.
- A service mark is in use in commerce with services when (1) the service mark is used in the sale, advertising, or rendering of the services, and (2) the services are actually being rendered in commerce.
- Use in commerce must be in the “ordinary course of trade,” and not just token use made solely to reserve rights in a trademark or service mark.
**NOTE: we use trademark and service mark interchangeably moving forward.
There are three types of commerce under federal law:
- Interstate (between two or more U.S. states)
- Territorial (between the United States and a territory of the United States)
- Foreign commerce (between the United States and a foreign country).
Purely intrastate commerce (use within one state), however, is generally not acceptable use.
To claim use in commerce for your intent-to-use application, you can claim use either (1) before your application is approved for publication by filing an Amendment to Allege Use; or (2) most common, by filing a Statement of Use within six (6) months from the issuance of the Notice of Allowance.
What information needs to be in the Amendment to Allege Use (AAU) or Statement of Use (SOU)?
You may file an AAU or SOU once you have actually used your trademark in commerce on or in connection with all the goods and/or services in your application.
The AAU or SOU must include the following:
- Two statements: (1) “Applicant believes applicant is the owner of the trademark” and (2) “the trademark is in use in commerce”.
- A Date of First Use Anywhere: The date the trademark was first used anywhere on or in connection with the goods and/or services.
- A Date of First Use in Commerce: The date the trademark was first used in commerce on or in connection with the goods/services.
- A list of the goods and/or services from the application for which you are claiming use. In order to file an AAU or SOU, you must be using the trademark on all of the goods/services listed in the AAU or SOU. At this point in time, it may make sense to delete certain goods/services from your application or to divide the application (we can help you with this!).
- One specimen for each class showing how you use the trademark in commerce with the goods and/or services.
- A filing fee for each class of goods and/or services for which you are claiming use.
- Verification of the above items under penalty of perjury.
What if you do not have use within six (6) months of the Notice of Allowance (NOA)?
If you do not have use of your trademark, you can file a request for extension to file a SOU.
You must file the first extension request within six (6) months after the USPTO issues the NOA, pay the required fees, and include a verified statement of your continued bona fide intention to use your trademark in commerce. By filing the FIRST Extension, you will then have one year from the date of the NOA to submit your Statement of Use.
You can file up to four (4) more extension requests. Each of the SECOND through FIFTH extension requests covers a consecutive six-month extension period. The USPTO must receive your request before the previous six-month extension period expires. The SECOND through FIFTH extension requests must include a showing of “good cause,” which is a statement of your ongoing efforts to make use of your trademark in commerce.
If you request all five extensions, you will have a maximum 36 months from the date the USPTO issues the NOA to file your Statement of Use.
You must timely file a Statement of Use. If you do not timely file an acceptable Statement of Use, your application will be abandoned.
Use-Based Applications
When you can show that you are using your trademark in commerce with all of the goods/services in your trademark application, then you can file a Use-Based application. Similar to the SOU, you will be required to include the following information in your application:
- Two statements: (1) “Applicant believes applicant is the owner of the trademark” and (2) “the trademark is in use in commerce”.
- A Date of First Use Anywhere: The date the trademark was first used anywhere on or in connection with the goods and/or services.
- A Date of First Use in Commerce: The date the trademark was first used in commerce on or in connection with the goods/services.
- A list of the goods and/or services from the application for which you are claiming use.
- One specimen for each class showing how you use the trademark in commerce with the goods and/or services.
- A filing fee for each class of goods and/or services.
- Verification of the above items under penalty of perjury.
Choosing the proper filing basis for your trademark application is a critical first step in the trademark application process. Each basis has different requirements and we can help you strategically decide which basis is right for you. We are happy to consult with you regarding the appropriate filing basis or bases for your trademark application.
