Intent to use trademark registration application tips:
Many clients wonder whether or not they have to start using their trademark in commerce before they register their trademark with the USPTO. The answer is simple. You do not need to use your trademark before filing for trademark registration. You can file an "intent to use" trademark application in order to put a marker down and tell the rest of the world that you are claiming trademark rights in the particular words, stylized design, logo, catchphrase or slogan.
All too often clients seek to have trademark filed with the USPTO even though they have yet to meet the requirements needed to legally file a trademark application, let alone achieve trademark registration. More often than not, the applicant has not established a use in commerce for its trademark quite yet and simply hopes to file an Intent to Use trademark application in order to buy time (six months until an Amendment to Allege Use must be filed) during which the applicant can begin to produce the goods, offer the services, or simply prepare the mark. With priority being so important, it is not out of the realm of possibility that applicants become overly aggressive in their filings.
The recent decision by the TTAB reaffirms that an Intent to Use Trademark, under section 1(b) of the Trademark Act, is not simply a mechanism that can buy time for the applicant to meet the requirements of a section 1(a) Use in Commerce trademark. Even if the mark eventually achieves registration, it is subject to opposition and cancellation in light of the decision in L.C. Licensing, Inc. v. Cary Berman, Opposition No. 91162330 (TTAB March 28, 2008). Here is what a trademark applicant needs to know.
An applicant filing a section 1(b) Intent to Use trademark must possess a bona fide intent to use the mark. This means more than a good faith intention to eventually use the mark in commerce. As the opinion referenced above sets forth in greater detail, more is required; namely evidence documenting your intent to use the trademark. This could be samples of brochures, fliers, signs, or other materials evidencing how the mark is going to be used; website schematics or work-ups; business plans detailing the intended audience for the mark; or other objective evidence showing how the mark will be used to identify the source or origin for the goods or services it will represent. Simply put, supporting information and documentation evidencing the applicant’s bona fide intent to use the trademark is an absolute must. If you have everything prepared and have simply yet to use the mark in commerce, than an Intent to Use trademark is likely worth filing and meets the requirements set forth in the opinion above. However, if you woke up today and thought of a word or image that could represent a good or service, you will likely need to do more before it is time to file an Intent to Use trademark. At a minimum, you should consult with an attorney prior to filing any trademark with the USPTO.