Applications Based on Intent to Use in the U.S.

Trademark rights are based on use within the United States. If you are not using a trademark to advertise your services to consumers or as a name of a product that is currently being produced and sold to consumers, then it is not possible to register a trademark.

Despite the use in commerce requirement to protect a trademark, it is still possible to reserve your desired mark while you are setting up your business, so that another party does not secure the same or a similar mark in the meantime. This is done by filing your trademark application based on your intent to use the trademark in the future.

The disadvantage to an intent to use application is that it is more expensive than other types of applications, however the extra costs are spread out over a year or more. Approximately 8 months after the intent to use application is submitted, you will have to be able to demonstrate that your trademark is being used in commerce by filing a Statement of Use which typically has $100 in government filing fees. If you can not show use in commerce at this time, a 6 month extension can be requested which typically costs another $150 in government filing fees. You can keep a trademark application active for up to 36 months, provided you file your extensions in a timely manner

The advantage to an intent to use application is that your trademark application filing date will serve as your date of first use once your mark registers. So even if it takes you two years to actually start using your mark in commerce, the date the application was submitted will serve as the date your federal trademark rights begin. This is important if there is ever a conflict with another trademark as the mark with the earlier use date generally wins. Finally, your intent to use application will block other companies from securing a trademark identical or similar to yours while you work to bring your goods and services to market. Generally, an intent to use application is a good choice where you require a significant amount of time to bring your goods and services to market and you are very invested in using a particular mark.

For an overview of this process, see the Section 1(b) Timeline for U.S. Applications based on intent to use.

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