Home » Blog » Intent-to-Use Trademark Application: Comprehensive Guide
A Section 1(b) Intent-to-Use trademark application means that a person or legal entity has a “bona fide” intent to use the trademark “in commerce” in the near future. File an Intent-to-Use trademark application if you: (1) are not using your trademark in commerce; (2) are concerned about someone taking your mark; or (3) meet all three of the clearly defined Intent-to-Use requirements discussed below.
Table of Contents
- I. The Two Common Trademark Applications: 1(a) Use in Commerce vs. 1(b) Intent-to-Use
- II. Pros and Cons to Filing an Intent-to-Use Trademark Application
- A. Benefits
- 1. Constructive Notice to the Public and Priority Rights
- 2. Retroactive Protection from the Date of Filing
- 3. Lower Risk
- B. Cons: Cost to Maintain
- A. Benefits
- III. If You are Not Yet Selling Goods or Services, File an Intent-to-Use Trademark Application
- A. Bona Fide Intention to Use
- B. “In Commerce” Requirement
- 1. What “Use In Commerce” Means: Territorial, Interstate, and Foreign Commerce
- 2. Use in Commerce Examples:
- 3. Proving of “Use in Commerce”: Statement of Use/Amendment to Allege Use
- 4. “Blackout Period”
- 5. In Commerce: Summary
- C. With Goods and Services in the Near Future
- IV. How Do I Submit Proof for my Intent-to-Use Trademark Application?
- V. Conclusion
If you begin an application with the United States Patent and Trademark Office (USPTO)’s TEAS System, you will encounter the following:
- “1(a) – Actually using the mark in commerce now”
- “1(b) – No use of mark yet, intending to use”
- “44(d) – Foreign application exists for the same goods/services”
- “44(e) – Foreign registration exists for the same goods/services”
Section 44(d) and Section 44(e) involve foreign applications/registrations filed in the US. In this post, I cover only the first two: Section 1(a) and Section 1(b), with a heavy emphasis on Section 1(b) – Intent-to-Use.
I. The Two Common Trademark Applications: 1(a) Use in Commerce vs. 1(b) Intent-to-Use
There are generally two common types of trademark applications available:
- Section 1(a) – Use in Commerce Trademark Application
- Section 1(b) – Intent-to-Use Trademark Application
Briefly, Section 1(a) alleges that the trademark is currently in use in commerce by the applicant and does not entail an additional fee. A Section 1(a) Use in Commerce application requires the applicant to provide proof of use. Providing trademarks on goods or in association of services, and webpage printouts or photographs of the same, suffices as proof of use.
On the other hand, a Section 1(b) Intent-to-Use means that the applicant is: (1) currently not using the trademarking in a manner that meets the “use in commerce” requirement”; (2) the applicant has a legitimate intention to use the mark in commerce in the near future; and (3) applicant will (a) submit an additional $100 fee per International Class of goods or services at that later date with (b) appropriate specimens at that time.
- Related: What are Trademarks and What Do They Protect? 
II. Pros and Cons to Filing an Intent-to-Use Trademark Application
Generally, there are three benefits and one drawback.
The three main benefits of an Intent-to-Use trademark application are (1) public notice and priority rights; (2) retroactive protection; and (3) lower risk. I discuss each below.
1. Constructive Notice to the Public and Priority Rights
First, it allows trademark owners to provide the general public “constructive notice” regarding their Intent-to-Use a trademark application. If you file an Intent-to-Use application, it will show up in the UPSTO database within five to seven days, the same time as it would show with a Use in Commerce application. Additionally, filing an Intent-to-Use application, instead of waiting to meet the use in commerce requirement provides a time and priority advantage. While the United States is a “first to use” country, filing an Intent-to-Use trademark application will prevent another individual from successfully registering their trademark with the USPTO while yours is pending. If the USPTO sees a conflict with your mark, it will suspend the conflicting mark.
2. Retroactive Protection from the Date of Filing
Second, if your trademark Intent-to-Use application succeeds to registration, it will provide protection retroactively. In plain English, protection starts from the filing date. Of course, the same is true of Use in Commerce applications. However, this is a particularly useful benefit for a person or business that needs protection as soon as possible.
3. Lower Risk
For sophisticated businesses with large marketing budgets and new products, it is strategically wise to file an Intent-to-Use trademark application. The reason for this stems from the fact that few, if any sophisticated business will wait until product launch to risk jeopardizing the loss of trademark rights. So, for example, large companies will file an Intent-to-Use trademark application to secure priority over a given trademark name, develop and market a product, and then roll out a launch where the product is available to an end user under that trademark. This mitigates the potential risk associated with losing a trademark name by waiting until the product release date to file a trademark.
B. Cons: Cost to Maintain
The negative associated with an Intent-to-Use application is the extra fee due in several months. Specifically, the USPTO will require $100 per International Class of goods or services within six months from the date your first Notice of Allowance issues. The USPTO will also require submission of specimens of use under either an Amendment to Allege Use or a Statement of Use. If, for any reason you have not used the trademark by that time, you can request a six-month extension for $125 per International Class. There are a total of five extensions for total time period of 36 months (or three years) to prove use in commerce ((5 extensions x 6 months) + 6 months initial time).
- Related: How Long Does It Take to Get a Trademark? 
III. If You are Not Yet Selling Goods or Services, File an Intent-to-Use Trademark Application
In trademark law, an “Intent-to-Use” is a legal term for a type of trademark application. It means that the entity or person intends to use a trademark in the near future, but is currently not using the trademark on goods or services. A person must use a trademark or risk the trademark’s forfeiture. This means that trademarks are a use-it-or-lose-it proposition.
The USPTO describes Intent-to-Use as: “[a] bona fide intention to use [a] mark in commerce with . . . goods and/or services in the near future.” By now, you likely have come to a screen that shows two options:
- “Section 1(a) – Actually using the mark in commerce now”
- “Section 1(b) – No use of mark yet, intending to use”
The elements of an Intent-to-Use Application are:
- (1) a bona fide intent-to-use;
- (2) a mark in commerce; and
- (3) with goods and services in the near future.
Below, I will provide an explanation of all the relevant points, so you can determine if filing an Intent-to-Use trademark application or a Use in Commerce trademark application is right to protect your mark. As we go through each element, see if you can determine which application applies to you: Use In Commerce or Intent-to-Use.
A. Bona Fide Intention to Use
The USPTO has a public interest in ensuring bona fide use. In fact, part of the primary trademark statute, Section of 1 of The Lanham Act of 1946, explains that the USPTO’s purpose in relation to trademarks:
A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register . . . .
Section 1 of the Lanham Act 15 U.S.C. §1051(b); see also 37 C.F.R. § 2.34. The public interest at issue is “squatting,” or taking title to a trademark without the intention to use it. Additionally, merely communicating to another individual a vague Intent-to-Use a trademark confers no right to use a trademark. Zazu Designs v. L’ORÉAL, SA, 979 F. 2d 499, 504 (7th Cir. 1992). In contrast, a Use in Commerce Application has no similar “intention” element.
B. “In Commerce” Requirement
In commerce (commonly called “Use in Commerce”) means using the mark in connection with the goods or services. “'[U]se in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” See TEMP §901.02. The USPTO will root out trademarks that are reserved for “token use.” Id. (explaining what “bona fide use in the ordinary course of trade means”). “Use in commerce” can vary from one industry to another. For instance, a company that makes seasonal sales, such as Christmas trees, or infrequent sales, such as medicine for clinical trials, qualify. Both of these are examples of use in commerce.
1. What “Use In Commerce” Means: Territorial, Interstate, and Foreign Commerce
Here, “use in commerce” means using the mark in “interstate commerce,” which is commerce Congress can regulate. Interstate commerce involves commerce between two states (example: sale of toothbrushes from a Texas store to a Florida resident). Territorial commerce is commerce that involves a U.S. state and a U.S. territory (example: sale of oranges from Florida to residents of Puerto Rico, a U.S. territory). Foreign commerce, of course, is commerce between the United States and a foreign nation (example: software as a service (SaaS) sale between a U.S.-headquartered company and a Japan-based web developer).
2. Use in Commerce Examples:
Congress can regulate commerce outside of your state, commonwealth, territory, or country. For example, a Portland, Oregon shoe store selling two sneakers across state lines to San Jose, California is interstate commerce. However, purely intrastate commerce, or commerce within a state would not fall within the “use in commerce” requirement. If the same store sells one pair of sneakers each to two Oregon residents, i.e., intrastate, it is not engaging in interstate commerce, and therefore there is no “use in commerce.” However, if the same shoe store sold two sneakers to two out-of-state residents who came to Portland, Oregon for a day, the courts would view this as “interstate commerce.” See Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 993, 120 USPQ2d 1640, 1645 (Fed. Cir. 2016).
3. Proving of “Use in Commerce”: Statement of Use/Amendment to Allege Use
Specimens, or examples of how you use your trademark in commerce, are not required to file an Intent-to-Use trademark application. However, a few months after the application is filed, the USPTO will issue a Notice of Allowance. Once the Notice of Allowance issues, applicants have six months to file a Statement of Use, or an Amendment to Allege Use. Appropriate specimens are also required at that time. The key difference between a Statement of Use or an Amendment to Allege Use is that an Amendment to Allege Use may be filed after the trademark filing date, but prior to publication of the mark.
4. “Blackout Period”
The period after publication, and the Notice of Allowance issuance, is known as the “Blackout Period.” The USPTO will not accept Amendment to Allege Use filings during this time. If the Amendment to Allege Use is rejected or the Amendment to Allege Use is filed but withdrawn, the USPTO shall issue a Notice of Allowance. A Statement of Use may only be filed after a Notice of Allowance.
5. In Commerce: Summary
In summary, you may prove “use in commerce” by:
- (1) filing a Statement of Use within six months of your Notice of Allowance;
- (2) filing an Amendment to Allege Use before publication; or
- (3) within a short period of time after an extension or after the Notice of Allowance.
If you do not provide proof and appropriate fees by the deadline, the trademark application will be abandoned.
C. With Goods and Services in the Near Future
To meet the requirement, your trademark must be associated with at least one International Class of goods or services. To find your International Class, search the Trademark ID Manual (TMID).
- International Classes 1 through 34 are goods.
- International Classes 35 through 45 are services.
To prove use in commerce, provide proof showing the trademark affixed to the goods or services. For example, if you are advertising a software service, submit webpage specimens showing the trademark with advertising. If your trademark is on physical goods, a label or tags bearing the trademark is acceptable.
- Related: TEAS Plus vs Standard: Pick the Right Trademark Application
IV. How Do I Submit Proof for my Intent-to-Use Trademark Application?
Typically, a webpage saved as a PDF will suffice for an appropriate specimen. The trademark must be closely associated with the goods, products, or services that you sell. The webpage must be accessible and the PDF (a jpg. file is also acceptable so long as it has a date stamp) must be uploaded. If the goods, products, or services are sold in person and are not online, then photographs of packaging, labels, shipping labels and stationery with the trademark are acceptable alternatives. Remember, the goods and services must be sold “in commerce” which means commerce that Congress can regulate.
In closing, file an Intent-to-Use trademark application if goods or services are not currently sold under your trademark. You represent under oath that there is a true intent to use the trademark in commerce, and that it is not a “token” attempt to acquire a trademark. Additionally, an Intent-to-Use trademark application requires proof of sale of the goods or services “in commerce.” The benefits of an Intent-to-Use trademark application are: (1) priority rights; (2) public notice; and (3) lower risk. The negative is the additional $100 fee per International Class of goods or services due within six months after receipt of a Notice of Allowance.
Contact Syed Law today if you would like us to help you with your Intent-to-Use trademark application.
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The four steps to registration are:  business name search,  preparing the registration application,  submitting the registration application, and  responding to the USPTO examiner. Trademarks and Service Marks are used to protect business names, logos, and slogans.What is intent of use? ›
Intent-to-use (ITU) application is one type of trademark application that a trademark applicant can file with the United States Patent and Trademark Office (USPTO) to register the trademark before using the mark in commerce.What can I use as a specimen for trademark application? ›
For example, a specimen could be an advertisement, brochure, website printout or other promotional material which shows your trademark used for the services, business signs where the services are rendered showing your trademark, or a service vehicle showing your trademark.What is bona fide intent? ›
A bona fide intent to use refers to a sufficient degree of intent to use a trademark. The degree of sufficiency must be more than simply any intent. In other words, the extent of the trademark applicant's intent must be significant and supported by evidence.What are the three requirements for trademarks? ›
- The trademark must be applied for under the actual owner's name. ...
- The applicant must specify what type of entity it is (individual, corporation, etc.) ...
- The application must be based on actual use or a real intent to use the trademark in commerce.
Trademark Specimen Examples
A photograph of a clothing tag. Marketing material such as brochures and advertisements. The mark directly on the product. The mark on product packaging.
The Model Penal Code divides criminal intent into four states of mind listed in order of culpability: purposely, knowingly, recklessly, and negligently.What are the three common use cases of an intent? ›
- Starting an activity. An Activity represents a single screen in an app. ...
- Starting a service. ...
- Delivering a broadcast.
Three types of criminal intent exist: (1) general intent, which is presumed from the act of commission (such as speeding); (2) specific intent, which requires preplanning and presdisposition (such as burglary); and (3) constructive intent, the unintentional results of an act (such as a pedestrian death resulting from ...What words Cannot be used in trademark? ›
A trade mark cannot be descriptive. This means that it cannot describe the quality, purpose, or other descriptive characteristics of the goods or services for which it is being used.
Trademarks which contain or comprise matter likely to hurt the religious susceptibilities of any class or sections of citizens of India. Trademarks which contain or comprise scandalous or obscene matter. If the usage of the trademark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.How long does intent to use trademark last? ›
How Long Does it Last? The USPTO will give you six months from the time you file your intent to use application to put the mark in use and file your statement of use. If you need more time, you can file an extension request.What is a good sentence for the word bona fide? ›
She has established her position as a bona fide celebrity. His latest record was a bona fide hit. They have a bona fide claim for the loss.
Meaning of Bonafide use
In India, trademark law places restrictions on licensed applicants and makes it mandatory to use the logo with a good faith purpose in both industrial and commercial matters. The legislation protects the consumer by excluding the possibility of an unfair advantage.
In determining the likelihood of confusion in trademark infringement actions the courts look to these eight factors: the similarity of the conflicting designations; the relatedness or proximity of the two companies' products or services; strength of the plaintiff's mark; marketing channels used; the degree of care ...What are the four types of trademarks? ›
- Arbitrary or Fanciful.
Types of trademarks for products include five main categories: generic mark, descriptive mark, suggestive mark, fanciful, and arbitrary mark.What is a poor man's trademark? ›
A poor man's trademark, in simple terms, is when a person mails to themselves in an envelope their underlying artwork or name they wish to trademark to themselves using the United States Postal Service.What is the strongest type of trademark? ›
The strongest types of trademarks are (1) fanciful or coined marks, such as EXXON for petroleum products; and (2) arbitrary marks, such as AMAZON for retail services.What counts as proof of use trademark? ›
Proof of use is evidence that clearly shows how you are using your mark in commerce on the identified goods or in connection with the services in your registration. Examples for goods: Photographs that show the mark on a tag or label affixed to the goods.
In California, most crimes require a general intent. If the criminal act is completed by taking action, general intent can be proven by showing that you intended to perform the act. Some criminal acts are the failure to take an action that a statute requires.How do you structure a statement of intent? ›
- Introduce yourself. ...
- Explain more about your educational background. ...
- Discuss your work experience. ...
- Write about your academic interests. ...
- Include your long-term goals. ...
- Proofread your statement.
Crimes are classified according to two types of intent: specific and general intent. The main difference between the two is if the defendant intended the conduct and the result or only the conduct.What are the key fields of an intent? ›
For explicit intents, the key fields of an intent include the following:
- The activity class (for explicit intents). ...
- The intent data. ...
- Intent extras. ...
- Intent flags.
Intents, in Android, are messaging objects and they are used to pass data to other components of your app or other Android apps. And typically, they are used to start activities in your own app or pass information to other apps that performs specific functions.Is intent difficult to prove? ›
It is more difficult for prosecutors to prove that someone acted intentionally. It is relatively easy to show that a defendant acted negligently. In either case, it takes either direct or circumstantial evidence to overcome the burden of proof.How difficult is it to prove specific intent? ›
Proving Intent in Court
Since intent is a mental state, it is one of the most difficult things to prove. There is rarely any direct evidence of a defendant's intent, as nearly no one who commits a crime willingly admits it. To prove criminal intent, one must rely on circumstantial evidence.
The criminal intent of purposely is considered the most serious criminal intent because an offender who intentionally violates the law has not been deterred by the threat of criminal prosecution, conviction, and punishment.What is the weakest type of trademark? ›
Generic. Finally, a generic mark is the weakest form of a mark because it simply uses the word of the good or service as its trademark.Can you trademark two common words? ›
Maybe. Common words and phrases can be trademarked if the person or company seeking the trademark can demonstrate that the phrase has acquired a distinctive secondary meaning apart from its original meaning. That secondary meaning must be one that identifies the phrase with a particular good or service.
1. Can You File for a Trademark That Exists? Updated November 12, 2020: If you're wondering, "can you trademark something that already exists," the simple answer is "no." Generally speaking, if somebody has used a trademark before you, you can't register the trademark for yourself.When can you use a trademark without permission? ›
By law, you need not request permission to use a trademark belonging to another if it is for an editorial or informational use. Trademark law protects distinctive words, phrases, logos, symbols, slogans, and any other devices used to identify and distinguish products or services in the marketplace.What is the most common reason that a trademark might be rejected? ›
The most common are: Likelihood of Confusion: The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed.Can I use my trademark on any product? ›
You can't register a word, phrase, symbol, or design as a trademark without specifically identifying the goods or services being used. Your trademark isn't limited to one good or service. It can be used with many different goods or services, and include both goods and services.Can you lose a trademark if you don't use it? ›
The Loss of Trademark Rights
A mark will be considered abandoned if you stop using it for three consecutive years and you have no intent to resume its use. You can also lose a mark through improper licensing or improper assignment.
You can lose your exclusive proprietary interest in a mark if it is not properly defended. Although a trademark can be recognized at common law, your best protection comes from using a registrable mark and getting it registered with the United States Patent and Trademark Office.Do I get my money back if my trademark is rejected? ›
Will the Trademark Office refund the government fees if my trademark is refused? Unfortunately the government fees for a trademark filing are never refundable. When a trademark application is filed, the government fees are paid.How much does it cost to file an intent-to-use trademark? ›
There are two initial application filing options: TEAS Plus - $250 per class of goods/services. TEAS Standard - $350 per class of goods/services.Can you transfer an intent-to-use trademark application? ›
For Intent-to-Use applicants, if you're transferring ownership to a business successor for the goods or services for which your mark relates, you can file your assignment at any time. In all other cases, you must wait until after you file an Amendment to Allege Use before you file your assignment. See TMEP §501.01(a).Can we use trademark after application? ›
Once you have filed the trademark application, the Symbol “TM” can be used with your products. The symbol “R” can be put into use only after you have obtained registration of your trademark.
If something or someone is bona fide, they are genuine or real.What is the difference between bona fide and bona fides? ›
In modern English, bona fide (without the s) is usually an adjective meaning (1) made or carried out in good faith or (2) real or genuine. Bona fides, with the s at the end, is a noun meaning (1) good faith, (2) credentials, or (3) information that establishes a person's reputation or credentials.What is the difference between bonafide and bona fide? ›
Bona fide is a Latin phrase meaning “in good faith,” most often used to mean “genuine” today. It is often misspelled as if it were the past tense of an imaginary verb: “bonafy.” The correct spelling is “bonafide.” BUY THE BOOK!How do you prove a trademark is first used? ›
Generally, you will be required to verify your dates of first use with a supporting affidavit or declaration under 37 C.F.R. §2.20 when (1) you make changes to the dates of first use, or (2) you provide dates of first use after such dates were initially omitted in the application or allegation of use.What is Rule 46 in trademark Act? ›
(4) Where in a case to which sub-section (1) applies, a trade mark in respect of any goods or services is registered in the name of an applicant who, relies on intention to assign the trade mark to a company, then, unless within such period as may be prescribed or within such further period not exceeding six months as ...What do you call the use of a trademark without the consent of the owner to cause confusion or to deceive purchasers? ›
Trademark infringement involves the unauthorized use of someone's trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source, sponsorship, affiliation, or approval of the goods and/or services.What are the steps in trademark registration? ›
- Step 1: Trademark Search. ...
- Step 2: Filing Trademark Application. ...
- Step 3: Examination. ...
- Step 4: Publication. ...
- Step 5: Registration Certificate. ...
- Step 6: Renewal.
Generally speaking, these marks could either be a Generic Mark, Descriptive Mark, Suggestive Mark, Fanciful Mark, or an Arbitrary Mark. USPTO categorizes trademarks primarily based on the nature of the product relative to the mark under consideration.What are the steps in trademark process? ›
- Step 1: Is a trademark application right for you? ...
- Step 2: Get ready to apply. ...
- Step 3: Prepare and submit your application. ...
- Step 4: Work with the assigned USPTO examining attorney. ...
- Step 5: Receive approval/denial of your application. ...
- Step 6: Maintain your registration.
Before filing a trademark/service mark application, you should consider (1) whether the mark you want to register is registrable, and (2) how difficult it will be to protect your mark based on the strength of the mark selected. Note in this regard that the USPTO only registers marks.
- It identifies the product and its origin.
- It proposes to guarantee the quality of the product.
- It advertises the product as it represents the product.
- It creates the image of a product in the minds of the public, especially the consumers or the prospective consumers of the product.
TM, R and C symbol are used with a trademark or copyright to indicate that intellectual property is registered by its owner or inventor and that the owner has right to file a complaint or can take any business to the court if they have stolen the idea or any other intellectual property belonging to the idea owner or ...How many days will it take to get trademark approved? ›
7. How long does it take to register a trademark? Trademark Registration is a lengthy process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, the trademark application number is usually issued within one or 2 days after filing.How long does it take to get a trademark application approved? ›
Usually, the process takes 12 to 18 months. Registering your trademark is a complex procedure that involves your application moving through various stages. Learning about each stage in the process will help you understand why getting a trademark takes as long as it does.Are trademarks first to file or first to use? ›
first to file. In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the rule is that ownership of a mark goes to the first-to-use, not the first-to-file.What trademarks are not allowed? ›
Trademarks which contain or comprise matter likely to hurt the religious susceptibilities of any class or sections of citizens of India. Trademarks which contain or comprise scandalous or obscene matter. If the usage of the trademark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.