By: Jason Zaccaro

Figuring out exactly when the right time to file an application for a trademark can be difficult for a new start up or business. The first thing that a company must do, is figure out whether it needs to file a regular application, or an intent to use application. Trademarks do not have trolls that file for trademark registrations and never use them, just so that they can sue infringers, the way that patent law does.  Trademarks function on a use it or lose it basis, in order to get a trademark registered, the applicant must be using it in interstate commerce, and even if the applicant uses it, the trademark can be abandoned if the applicant does not use it in commerce for more than three years.[1] If a company is going to file a regular trademark application, it needs to make sure that it is using the mark in commerce, and that it will be able to do so somewhat sustainably.

Making sure that a mark is being used in commerce can be hard for companies to determine. For example, courts are split on whether or not being on AdWords on Google, that is, paying for a company’s name to appear first in google searches, counts as use in commerce. Similarly, just advertising website may be enough in some cases but not quite enough in others. Generally speaking though, if a company is already selling products under a trademarkable name, it is using their trademark commerce and should file a regular application as soon as possible.

If the company has yet to use the trademark in interstate commerce, it can file an intent to use trademark application. An intent to use application gives the applicant 6 months from a “Notice of Allowance” to show that it has started using the trademark, a deadline which can be periodically extended every 6 months if the applicant can prove to the Patent and Trademark Office. A total of 5 extensions can be filed, making the maximum time available to start using the mark 36 months.[2]This carries with it many advantages, one being that the company can claim the date of the intent to use application filing as its priority date for trademark disputes, and thus claim a trademark before it has actually started using it. The intent to use application unfortunately, does cost more than a regular application in terms of filing fees, and requires more back and forth interactions with the PTO office.  This is because the additional step of filing a statement of use or amendment to allege use carries with it an extra hundred-dollar fee that the regular application lacks because it lacks that step. [3] The statement of use is then subject to verification by the PTO, which means the applicant must interact with the PTO more.[4]  However, looking at costs solely in terms of filing fees can be short sided, and undervalue the true costs of getting a trademark. A company that files an intent to use application, is able to determine whether a trademark is available before it starts actually using the mark in commerce, which means that it can save money by not developing a particular brand and bringing it to market only to find that the trademark is unavailable for some reason or another.

It is also not insignificant that the company will be able to claim an earlier priority date for registration than it would have if it had to wait to use their mark in commerce. A 6-month window may not seem likely to be the difference between being the first to claim a trademark, particularly if it is an uncommon, completely made up trademark name. However, 6 months has made the difference in some cases, and the relatively modest extra fees of filing an intent to use application will in most cases be less than the costs of coming up with and developing a new trademark. For example, a Minnesota business filed an intent to use trademark application on December 10, 2011 for the mark, BLAST BLOW DRY BAR. However, a Texas business had already filed an actual use trademark application on December 8, 2011, beating the Minnesota company by just three days. Had the Minnesota company filed the intent to use application earlier, it would have been the senior user. [5]

There are some other downsides to filing an intent to use application as well. A company which is seeking to trademark a relatively weak trademark, one that falls in the category of descriptive, will not be able to register the mark with an intent to use application. Moving forward with a trademark that is descriptive is risky because it is not registerable until it has been used in commerce enough to gain secondary meaning, which means that consumers now associate the descriptive word with a particular source. It takes time to build secondary meaning however, and there is no strict quantitative indicator of when a mark acquires secondary meaning. Sometimes, being able show substantially exclusive and continuous use for 5 years is enough, but just how exclusive that use must be is not easy to quantify. [6] Additionally, using a mark for 5 years without being able to obtain federally registered trademark status is a somewhat risky proposition that entrepreneurs and companies will have to figure out if they are willing to risk, rather than picking a stronger word or phrase for trademark protection. Similarly, weak marks that might be eligible for the supplemental register, will not be eligible for the supplemental register based on an intent to use application. The supplemental register exists for trademarks that are not distinctive enough to be on the principal register but can still be used to distinguish the company’s goods or services from others. While the supplemental register does not give the same benefits of the principal, it does allow companies whose products or services are on it to use the ® mark as a deterrent to potential infringers, and to help gain trademark rights in other countries that have treaties with the US.[7]

Additionally, if one of the company’s goals with registering the trademark is to be able to license it soon, an intent to use application does not help. Trademarks filed under an intent to use trademark are not licensable to other company’s in the same way that regular applications are. Intent to use applications are only licensable to the successors of the business that is filing the intent to use trademark, or the successors of the part of the business that applied for the trademark if the overall company is still operating. If a company is trying to beat a competitor to filing for a trademark with the idea of licensing it to them after, an intent to use application is of little to use them. [8][8]

Ultimately the timing of when to file a trademark application and which application to file, depends largely on the answer to two questions. First, is the company using the trademark already, and if not, how soon will it be doing so? Second, how strong is the trademark in question? If the company is already using the mark in commerce, it is best to file to a regular application. If it is not using it yet but the mark is likely to be descriptive, it is likely better off waiting to file a regular application once it can show secondary meaning than it is filing an intent to use. However, if a company knows that it can start putting a mark to use within 6 months, or is reasonably sure that baring potential setbacks it can, it makes sense to file an intent to use application as soon as it can, provided the mark it is trying to trademark is not a descriptive mark.

 

Additional Sources:

https://smallbiztrends.com/2016/08/file-intent-to-use-trademark.html

http://www.patenttrademarkblog.com/intent-to-use-itu-trademark-application/

https://www.upcounsel.com/intent-to-use-trademark

https://www.nolo.com/legal-encyclopedia/should-you-file-intent-use-trademark-application.html

https://www.uspto.gov/trademark/fees-payment-information/overview-trademark-fees

https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e7.html

https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e10316.html

 

 

[1] https://www.upcounsel.com/trademark-abandonment

[2]  https://www.uspto.gov/trademarks-application-process/filing-online/intent-use-itu-applications

[3] https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule#TM%20Process%20Fee

[4]  https://www.entrepreneur.com/article/281125

 

[5] https://www.nolo.com/legal-encyclopedia/what-good-the-supplemental-register.html

[6]  https://www.upcounsel.com/secondary-meaning-trademark

[7] https://corporate.findlaw.com/intellectual-property/use-it-or-lose-it-the-importance-of-verifying-  trademark-use.html

[8] https://www.wnlaw.com/blog/understanding-benefits-risks-intent-use-trademark-application-uspto/