intent-to-use trademarks: why file early?

Young companies should be aware that they can apply to register a trademark with the United States Patent & Trademark Office (“USPTO”) even before they start using it.  This isn’t news to established companies and certainly not to trademark practitioners, but it is indeed news to many startups.

Why should I file early?

What I have found is that young companies will start investing time and money into a trademark that (a) could perhaps already be in conflict with an existing trademark, or (b) could be taken from them by another company that files first — creating a lengthy and costly conflict.

For these reasons I regularly advise my clients to start the trademark application process early in order to confirm that there are no existing and conflicting trademarks and to establish priority over later applicants.  An early application may also serve as a sufficient deterrence against later applicants.

What is involved in an intent-to-use application?

The intent-to-use application (also referred to as a “Section 1(b)” application) has filing fees identical to an actual-use application (also referred to as a “Section 1(a)” application), namely filing fees of $225 to $275 per class. However, they differ in this key aspect: At the time of the intent-to-use application, submitting proof of actual use is not required.  You merely have to indicate that you have a bona fide intention to use the trademark in commerce.

When you eventually make use of the trademark, and that use matches the use claimed in the application, a specimen proving actual use must be submitted to the USPTO.  This Statement of Use (“SOU”) comes with a filing fee of $100 per class.

How long do I have before I have to start making use of the trademark? 

Subsequent to filing an Intent-to-use application, the USPTO will examine the application to confirm that it meets all technical requirements. This review includes conducting a comparison with existing federal trademark registrations and raising any concerns over a likelihood of confusion.

Assuming the application clears the examination, the application will be published for opposition for a period of 30 days (allowing any concerned third parties to raise their concerns). Passing the publication period without any objections means you now have 6 months to prove use of the trademark by submitting an SOU.

What if I am not yet using the trademark within the 6-month deadline?

No need to worry if your plans to use the trademark were delayed. The USPTO freely grants time extensions. By “freely” I do not mean “for free”, I mean that they do so quite willingly. The USPTO will charge a filing fee every time you file for an extension of time (i.e. $125).  Also, you will be limited as to how many extensions you can secure.  The USPTO usually grants 6-month extensions for up to 5 years.

What if I haven’t yet committed to a particular trademark?

I have found in many cases that clients have settled on a word, but have not yet settled on its appearance (e.g. font, colors and design elements). Not having yet settled on the look and feel of the word, they assume they still are not ready to apply to register their trademark.  This is wrong.

The USPTO allows you to submit an application for the trademark in standard characters (protecting the text), irrespective of the look and feel (which could still be in its development stages).

Later, when you settle on the look and feel of the trademark, you can submit a second application to protect its design elements (if they are worthy of protection).  In other words, do not delay your trademark application if you have already settled on a word but are not yet settled on its appearance.

Your time and resources are valuable, so get things right the first time and protect your hard work.

* * *

Fabio R. Silva, J.D. Stanford Law
FRSilva Law
Disclaimer:  The above is for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney to obtain advice with respect to any particular issue or problem.

©2017 Fabio R. Silva. All Rights Reserved.



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