Intent to Use Trademark Application

Key Takeaways

• Use in Commerce” is a legal prerequisite for the federal registration of a trademark.
• Actual use of the trademark must be demonstrated prior to registration.
• The use in commerce applications offers robust protections and deters infringement.

Understanding Use in Commerce

Before digging into the intricacies of “Use in Commerce” it is essential to grasp its importance in the process of trademark registration. This section outlines the basic framework of trademarks and defines what constitutes use in commerce, in alignment with Section 45 of the Trademark Act.

Trademark Basics

Trademarks are symbols, names, phrases, or logos that distinguish and protect the identity of a brand by indicating the source of goods or services. To acquire legal protection, one must either register the trademark with the United States Patent and Trademark Office (USPTO) or establish it through bona fide use in commerce. Registration grants exclusive rights to the trademark, which protects the owner’s brand and bars others from using a confusingly similar mark.

Use in Commerce Defined

“Use in Commerce” refers to the actual deployment of a trademark in the marketplace with the goods or services it represents. For a trademark to be eligible for registration, it must be used in a manner that is bona fide, meaning genuine and intended for commercial gain, and not merely as a token use. Specifically:

• For goods: The trademark must appear on the product, its packaging, or its display, and the goods must be sold or transported across state lines or in a way that affects commerce.
• For services: The mark must be used in advertising or selling the services, and the services must be available in the marketplace where they can be rendered.

This criterion satisfies the “Use in Commerce” requirement under Section 45 of the Trademark Act, indicating that the mark is not merely a concept but is actively associated with items being provided to consumers.

Requirements for a Use in Commerce Trademark Application:

When applying for a trademark based on use in commerce, an applicant must demonstrate that the mark is already being used in the ordinary course of trade. The following are the specific requirements one must meet:

• Evidence of Use: Applicants must provide examples showing the mark in use. This can be in the form of labels, tags, or packaging displaying the trademark on the goods.
• Dates of Use: Accurate dates of first use anywhere and first use in commerce must be included in the application.
• Nature of Commerce: The commerce indicated must be regulatable by the United States Congress; typically, this means interstate, territorial, or between the U.S. and another country.

In addition to the above, the applicant must submit:

• Filing Fee: Payment of the current USPTO filing fees is necessary.
• Owner’s Information: Full legal name and citizenship of the owner, or if owned by an entity, its type and country of incorporation.
• Description of Goods/Services: A clear description of the goods or services associated with the mark.

Applicants must also satisfy filing basis requirements:

• If the application is based on Section 1(a), actual use of the mark in commerce is required.
• If leveraging a foreign registration under Section 44(e), then proof of such registration is required.

It is essential to submit a complete application to avoid delays and potential rejection. For a detailed breakdown on the application process and requirements, the USPTO application requirements page serves as a valuable resource.

Advantages of a Use in Commerce Trademark Application

When a business files a Use in Commerce trademark application, it demonstrates the actual use of a trademark in the marketplace. The benefits of filing under this basis (Section 1(a) of the Trademark Act) are numerous, prominently including:

• Legal Presumptions: A Use in Commerce application confers legal presumptions of the owner’s exclusive right to use the mark on the goods or services listed in the registration across the United States.
• Established Rights: Filing on this basis establishes a clear date of first use in commerce, which is critical for priority in trademark disputes. Trademark rights in the U.S. are generally awarded to the first party to either use a trademark in commerce or file an intent to use application.
• Reduced Filing Burdens: Unlike an Intent to Use application, there is no requirement to later submit a Statement of Use, since the mark is already in use when the application is filed.
• Marketplace Strength: Ongoing use of the mark can help in building brand recognition and loyalty, positioning the business as a de facto leader in its sector.
• Departmental Differences: Understanding the distinction between filing for goods versus services is essential. For goods, the mark must be used on the products or their packaging. For services, use in advertising and actual rendition of services is necessary. Information concerning the application process differs for goods and services, which underscores the importance of understanding these differences beforehand.

Application Process and Requirements

When seeking trademark registration through the United States Patent and Trademark Office (USPTO), applicants must decide on a filing basis for their trademark application. Two common filing bases are Intent to Use and Application Based on Use. Each basis has specific requirements and is part of a structured application process in the Trademark Electronic Application System (TEAS).

Intent to Use Application

An Intent to Use application, under Section 1(b) of the Trademark Act, is appropriate when services or goods are yet to be used in commerce, but there is a bona fide intention to use the mark commercially. Initially, this filing basis does not require a specimen, instead it necessitates a declaration of a good faith intention to use the mark with the relevant services or goods. Once the USPTO accepts the initial application, circulation in the Official Gazette, and the mark is unopposed, the applicant is required to submit an Amendment to Allege Use or a Statement of Use, together with a verified specimen of the mark as it is used in commerce. If this is not ready immediately after the Notice of Allowance, applicants may file extensions in six-month increments, for up to 36 months, to provide time to furnish the necessary statement and specimen.

Application Based on Use

Conversely, the Section 1(a) filing basis refers to a mark that is already in commercial use with the related goods or services when the application is submitted. Applicants must provide proof of use, known as a specimen, showing the mark as it is used in the marketplace. Additionally, a declaration of use must be attested with the application. The USPTO will conduct a formal examination process, which might involve an office action if there are legal issues or refusals to resolve. If all requirements are met and no opposition arises post-publication, the USPTO will issue the trademark registration certificate.

Maintaining and Enforcing Trademark Rights

Maintaining trademark rights involves continuous use of the mark in commerce. A trademark owner must use their trademark on goods, products, or services to signify the source of those goods or services to consumers. Under federal law, safeguarding these rights entails both administrative requirements and active enforcement.

Post-registration, trademark owners are required to submit specific documents to the U.S. Patent and Trademark Office (USPTO). To maintain a federal registration, they must:

• Continue to use the trademark in interstate commerce
• File an affidavit of use between the fifth and sixth year after registration
• Renew the registration every ten years
• Provide proof of use, to demonstrate that the trademark is not subject to an affidavit of nonuse or a petition to cancel

For effective marketing and advertising, consistent and correct use of the trademark in all commercial activities is crucial. This consistency strengthens the mark’s association with the brand and helps prevent dilution.

Enforcement of trademark rights primarily rests with the trademark owner. They must monitor the industry to detect and act against unauthorized uses of their trademark. This often includes:

• Sending cease and desist letters to infringers
• Filing lawsuits, if necessary, to enforce exclusive rights

Trademark owners bear the responsibility for both enforcing their rights in the marketplace and abiding by the upkeep requirements set forth by the USPTO. By fulfilling these obligations, they protect the integrity of their brand and its associated trademarks.

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