A very common question that we receive is,
“What is the difference between a use-based trademark application and an intent-to-use trademark application?”
In fact, we get this question so often that I have decided to write up this blog post highlighting the differences between the two, and some pros and cons for each.
Use-Based Trademark Applications
To start, let’s break down the “use-based” federal trademark applications, which are the standard type of application. In the US, trademark rights vest with one’s use of the mark in interstate commerce, creating what are called “common law” trademark rights. These rights are valid and enforceable in court, however they are limited to the geographic region where the rights holder has done business. However, these common law rights serve as an excellent basis for filing for federal registration with the United States Patent and Trademark Office (USPTO), which gives nation-wide protection for the rights holder.
When filing a use-based application, evidence of use in interstate commerce must be submitted as part of the application, and the type of evidence accepted will depend on the goods/services that are listed in the trademark application. For folks who are looking to protect their trademark prior to actually doing business, this requirement can pose a challenge. However, for folks who are already using their trademark in interstate commerce, filing this type of trademark application will provide a cheaper and faster route to registration when compared with an intent-to-use trademark application.
Intent-to-Use Trademark Applications
For folks who have a “bona fide intent to use” a trademark in interstate commerce, and who are willing to certify under penalty of perjury of this intent, they can file for protection with the USPTO immediately. Generally speaking, the process and requirements for a use-based and an intent-to-use trademark application are similar, although the intent-to-use applications have an additional step. When filing an intent-to-use trademark application one does not have to provide any evidence of use of the mark in interstate commerce, they must simply certify their bona fide intent to use the mark on the goods/services that are indicated in the trademark application. It is possible to list a large amount of goods at the time of filing (provided the bona fide intent exists for each listing) and then remove goods/services down the road.
Similarly to the use-based applications, intent-to-use applications must be evaluated by an Examining Attorney at the USPTO, who checks for any conflicting marks, as well as that the trademark rules and regulations have been complied with. After passing the Examining Attorney’s review, there is a 30-day public comment period where any member of the public who believes that they will be damaged by the registration of the applicant’s trademark is able to “oppose” the application, which leads to a proceeding before the Trademark Trial and Appeal Board (TTAB).
However, once the public comment period has ended, the treatment of use-based and intent-to-use applications will differ. At this point, the use-based applications simply proceed to registration. However, the intent-to-use applications are granted what is called a “Notice of Allowance” which gives a period of 6 months from the mailing date of the Notice of Allowance for the applicant to submit their evidence of use in interstate commerce, via a form called a “Statement of Use.” If the applicant is not ready to submit evidence of use within that 6-month window, it is possible to file for up to 5 6-month extensions, for a total time of 3 years from the date of the notice of allowance. If no evidence of use can be submitted within that 3 year period, then the application must be refiled.
The intent-to-use applications are nice as it lets someone start to carve out their trademark rights before they are actually using it, but has the drawback of being slightly more expensive then the use-based marks (the submission of a Statement of Use, as well as any extensions, all carry a fee). There is an additional drawback that it often takes longer to obtain the intent-to-use trademarks, but sometimes that additional time can be leveraged to an applicant’s benefit.
In sum, both use-based and intent-to-use trademark applications can provide value to their owners. Which one to go with, however, will depend on the applicant’s immediate and future needs.
Want to learn more about federal trademark applications and registrations? Please feel free to reach out to our office to schedule a consultation.