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When Can (and Should) You File an Intent-to-Use (ITU) Trademark Application?

Thu Mar 10th, 2022 by  Trademarks

Trademark registration is essential for protecting companies’ names, brands and logos. Registering a trademark with the U.S. Patent and Trademark Office (USPTO) provides nationwide protection—and this protection affords the registered owner the right to prevent not only the use of the registered mark itself but also the use of any “confusingly similar” marks to promote competing goods and services.

Under the Lanham Act, companies have the option of filing for trademark registration with the USPTO on an intent-to-use (ITU) basis. Given the nature of today’s economy, filing on an ITU basis affords important benefits, and our Alabama trademark lawyer believes it to be the best option for many companies in most cases.

Eligibility to File an ITU Trademark Registration with the USPTO

In order to file for trademark registration with the USPTO on an intent-to-use basis (also referred to as a Section 1(b) filing), a company must have a good faith intention to use the mark in commerce. When filing the application, the applicant must make a sworn statement regarding good faith. As the USPTO explains:

“Your sworn statement . . . is sufficient evidence of good faith. This sworn statement will be evaluated only if the application record clearly contradicts this statement. However, if another person takes legal action to prevent your mark from registering, that person may question your good faith. So it’s important to document your efforts to start your business involving the goods and/or services listed in your application.”

Examples of documentation that can be used to substantiate a good faith claim of intent to use include R&D records; market research; marketing strategy; establishment of commercial relationships; and submission of the name, brand or logo to other authorities (i.e., as the name of your company or on a business license application). As the USPTO notes, “[t]he dates in your documentation should be consistent with the date you filed your application.”

When a company files for trademark registration on an ITU basis under Section 1(b), the company’s priority date relates back to the date of application—assuming the application ultimately proceeds to registration. This means that any third-party uses of the mark (or a confusingly similar mark) that post-date the application will be deemed to infringe the mark—even if the mark wasn’t being used in commerce when these third-party uses began.

Moving from ITU Application to Registration

While companies can apply for trademark registration on an intent-to-use basis, obtaining registration requires evidence of use in commerce. A company can submit this information while its application is pending or after the USPTO issues a Notice of Allowance (essentially, a conditional approval). Applicants have six months to submit evidence of use in commerce following the issuance of a Notice of Allowance; however, applicants can request as many extensions as necessary with payment of the applicable fee.

Contact an Alabama Trademark Lawyer about Filing an ITU Trademark Registration Application

If you would like to know more about filing for trademark registration with the USPTO on an intent-to-use basis, we encourage you to get in touch. To schedule an appointment with an Alabama trademark lawyer at AdamsIP, please call 251-289-9787 or inquire online today. We assist clients throughout the state including Mobile, Huntsville, and Birmingham.