If a person or entity does not qualify to file a trademark application “in commerce,” then an applicant may file said Federal trademark application under an “intent-to-use” basis if certain qualifications are met. Specifically, to file an intent-to-use trademark or service application, the applicant must have a good faith or bona fide intention to use said mark in commerce with all the goods and/or in connection with all the services listed in said application in the near future. Intent-to-use trademark applications are referred to in shorthand as “ITU” trademark applications, and are filed under Section 1(b) of the Trademark Act. Some factors to consider when determining whether you comply with the qualifications for an ITU trademark include: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry. In the end, the applicant has to have a bona fide intent to use the mark in the ordinary course of a trade, and not made merely to reserve a right in a mark.
If a trademark application is filed under an intent-to-use basis, an applicant cannot get said trademark officially registered until the actual use of the applied-for mark with the applied-for goods and/or services has occurred. To show evidence of the same to the United States Patent and Trademark Office (“USPTO”), an applicant must timely convert said ITU application to a use-based one.
Filing an ITU trademark application has its benefits. Generally, an ITU application filing date is also your application’s effective filing date, which can be very important in the event a legal conflict develops and could provide priority over someone else’s filing, as the first user of a mark often wins in those types of conflicts.
If you believe you qualify for filing an intent-to-use Federal trademark application we at Johnson Dalal would be happy to answer any questions not answered above and/or to assist you with performing any trademark-related filings. Please contact us by telephone at (888) 201-8001 or (954) 507-4500, or by email at Info@JohnsonDalal.com. We look forward to being YOUR intellectual property attorneys.