Understanding Trademark Application Types: ITU vs. Use-Based

In the U.S., federal trademark applications can be filed on either a use or an intent-to-use basis. Each has different requirements and is appropriate in different circumstances.

💡 Use-Based Applications

To file a use-based application, you must already be making appropriate “use in commerce” of that mark. This typically means your product or service is being sold or offered for sale in connection with the mark, and you are selling or transporting your products out of state or are providing your services to customers who live outside of your state.

You’ll have to provide evidence of your use in commerce—namely, a specimen showing how you are using your trademark. The kind of specimen required, and the sufficiency of that specimen, will vary depending on the goods or services offered.

💡 Intent-to-Use Applications

If you have your mark selected but haven’t started using it in commerce yet (in the required manner), an intent-to-use application is your only federal application option. It is an excellent choice for reserving your trademark while you develop your product or service and get it to market.

The USPTO gives the following examples of when an intent-to-use application could come into play: “[Y]ou might intend to make and sell jewelry, but you’re just at the point of sourcing your materials—you haven’t started making or selling jewelry yet. Or you might currently be providing personal training services only to local clients in your state, but in the next year you’ll be expanding your services into the neighboring state.” See https://www.uspto.gov/trademarks/basics/application-filing-basis.

To file, you must have a “bona fide intent” to use the mark in the next few years—meaning you plan in good faith to use that mark in the reasonably near future and have evidence of that plan.

If you file on an intent-to-use basis, your mark won’t register until you’ve both started using the mark in commerce and provided the appropriate evidence showing that use—i.e., until you’ve filed an acceptable Statement of Use (SOU).

Once your application has been reviewed by an examining attorney and successfully made it through that examination, a Notice of Allowance is issued. You then have six months to file your SOU or an extension of time. You can file up to 5 extensions for a maximum possible extension period of 36 months from the issuance of the Notice of Allowance. If you don’t file the SOU within that time, the application is considered abandoned.

💡Navigating trademark applications involves significant legal intricacies beyond the general guidance provided above. Ensuring you have selected the correct type of application and that your application meets the necessary legal requirements is paramount. A misstep can lead to rejection and other problems down the road. Consulting with a qualified trademark attorney is invaluable in helping ensure the application process is executed correctly. Contact Brient IP Law today to hear more about how we can help you.