Intent to Use—Reserving Your Trademark Rights

Intent to Use—Reserving Your Trademark Rights - Pat Werschulz

I am frequently asked by clients who are thinking about starting their own companies and businesses:

When can I apply for my trademark?

In the U.S. Federal trademark system, you can file two different types of applications. One is the Actual Use Application, also known as the 1(a) application, which is where you have already been using your trademark and you have had a bona fide business transaction. This means you just have to fill out the application and go through the process, which takes about eight months. Part of the application process is to submit the specimen that has actually been used. In most of the state systems that have trademark registries, this is the only time that you can apply for a trademark registration, when you are actually using it to conduct business.                                  

But in the Federal system—and this is unique to the United States—you can apply for something called an Intent to Use Application. That is, if you have a really great name for your product or service and you want to make sure no one else starts to use it, you can apply and tell the trademark office that you are intending to use it. This puts the rest of the world on notice that you intend to have the rights in this trademark. It goes through a process similar to a trademark application for a trademark that is already in use. A trademark examining attorney looks at the application and, if everything is in good order, sends it along for publication. The trademark is published, and for 30 days, other parties have the right to oppose. If it does not encounter any opposition, it moves forward to receive a notice of allowance.

What Happens Next?                                         

At that point, if you are not using it already, either selling products or delivering services, you have six months to submit a specimen showing your actual use. Now, timing on this intent to use is very important. Lots of times people want to do it right away. My question to them is: how soon do you think you’re going to actually be in business?

If you think you are going to be in business within a year, then it makes sense to apply, but if you have no firm plan, then you run into a challenge: You have this notice of allowance and you have only six months to submit a specimen, which requires an additional fee.

Extension Fees                                           

At the end of the six months, if you still have not started the business, then you have to ask for a six-month extension. The fee for the extension is actually more expensive than the original fee for submitting this specimen. You can receive five extensions for up to a total of three years.

But these fees will cost you almost three times what you would have paid for an application for an intent to use. So it may be a great idea to reserve your name, but it could end up costing you three times as much than if you wait until you have actually begun using it.                                          

What should you do? That’s a question that’s specific to your situation and the nature of the mark you need.

If you are in a very competitive business, it may make sense to apply as soon as you can, reserving the mark, and just be willing to pay the extension fees if you have to. If you are in a field which is not very competitive, or the name is not that original, you may want to hold off until you are actually in business and save yourself some money.

The best way to decide is to discuss your specific situation with an experienced trademark attorney.

Patricia Werschulz

Patricia P. Werschulz
Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016
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