How Do Trademark Applications Filed On an Intent-to-Use & Use-in-Commerce Basis Differ?

If you are planning to register a trademark for your business, you may have encountered the terms “intent-to-use” and “use-in-commerce” when filing your application. These are two different bases for filing a trademark application, and they have different requirements and implications. Please continue reading and reach out to Lemler IP to learn more about the differences between them and how to decide which one is best for your situation.

Intent-to-Use

An intent-to-use application is filed when you have not yet used your trademark in commerce, but you have a bona fide intention to do so in the near future. This means that you have a concrete plan to launch your product or service under the trademark, and you are not just reserving the mark for speculative purposes.

An intent-to-use application allows you to secure your priority date for your trademark, which is the date when you first filed your application. This can prevent others from registering a confusingly similar mark before you start using yours. However, an intent-to-use application does not grant you any trademark rights until you actually use your mark in commerce and submit proof of such use to the USPTO. This proof is called a Statement of Use (SOU), and it must be filed within six months of receiving a Notice of Allowance (NOA) from the USPTO. You can request extensions of time to file the Statement of Use (SOU), but each extension costs an additional fee and you cannot extend beyond 36 months from the Notice of Allowance (NOA).

Use-in-Commerce

A use-in-commerce application is filed when you have already used your trademark in commerce, or when you are using it at the time of filing. This means that you have sold or offered for sale your product or service under the trademark, and that such sale or offer is interstate or affects interstate commerce. For example, if you sell your product online or ship it across state lines, that would qualify as use-in-commerce.

A use-in-commerce application requires you to submit proof of your use of the trademark along with your application. This proof can be a specimen of how you display your mark on your product or service, such as a label, a hangtag, a website screenshot, or an advertisement. You also need to provide the date of first use of your mark anywhere and the date of first use of your mark in commerce.

A use-in-commerce application grants you trademark rights as soon as it is approved by the USPTO. You do not need to file a Statement of Use (SOU) or pay any additional fees. However, you cannot file a use-in-commerce application if you have not yet used your mark in commerce, or if your use is only intrastate or local.

Which One Should You Choose?

The choice between an intent-to-use and use-in-commerce application depends on your specific circumstances and goals. Some important factors to consider are as follows:

• If you have already used your mark in commerce, or if you are ready to do so within six months of filing, then a use-in-commerce application may be more convenient and cost-effective for you.
• If you have not yet used your mark in commerce, but you have a clear plan to do so within 36 months of filing, then an intent-to-use application may be more suitable for you.
• If you are not sure when or how you will use your mark in commerce, or if you want to reserve your mark for future use without committing to a specific timeline, then an intent-to-use application may give you more flexibility and protection.
• If you are concerned about potential conflicts with other trademarks that may be registered or used before yours, then an intent-to-use application may give you an advantage by establishing your priority date earlier than a use-in-commerce application.

Regardless of which basis you choose, it is important to consult with an experienced intellectual property lawyer before filing your trademark application. A seasoned New Orleans, Louisiana trademark lawyer can help you conduct a comprehensive trademark search, prepare and file your application correctly, respond to any office actions or oppositions from the USPTO or third parties, and monitor and maintain your trademark registration. Contact Lemler IP today for a free consultation.