Applicants will see several terms on their applications, such as use in commerce or trademark intent to use, but what do they mean? Understanding the distinctions between these terms can mean the difference between a successful application to register a trademark and a costly and time-consuming denial. To learn more about the trademark application process and trademark registration requirements, schedule an appointment with Sullivan & Carter, LLP by calling (929) 724-7529 today.

What Is Intent To Use or Use In Commerce?

Registering the trademark on a product or service helps trademark owners to secure the exclusivity of their right to use that mark in commerce. Applicants seeking trademark registration have two options: intent to use or use in commerce. Selecting the appropriate filing basis when submitting the trademark registration application is important to avoiding filing errors that can result in frustrating delays, or even a rejection of the application to register the trademark.

What Is Used in Commerce for Trademark Purposes?

Trademark applications employ the terms “use” or “in use” when the trademark is already being used in interstate commerce. “Interstate commerce” is important because the United States Patent and Trademark Office (USPTO) only registers trademarks used in connection with business activities that fall under the jurisdiction of the United States Department of Commerce.

Slightly different rules apply to the demonstration of actual use for goods vs. services. Trademarks submitted for registration in connection with goods will have a mark placed on the packaging, the product, or at the point of sale. For service marks, specimens submitted to the USPTO to demonstrate use in commerce may only need to show that the mark is used in advertising, sales, or rendering the service. The requirement for actual use, however, is the same for service marks as for those applied to goods: The individual or entity seeking to register their trademark must use the mark in commerce.

Does a Trademark Have To Be Used in Commerce?

Use in commerce is how trademark rights are established under common law, and is correspondingly a requirement for registering one’s trademark with the USPTO, although for purposes of registration the definition of use may be expanded to include the development of a trademark with the intent to use it in commerce, subject to some additional requirements and a timeline for proving that the intent has been fulfilled. The concept of "use in commerce" makes sure that trademarks registered with the USPTO have a clear association with goods or services in the marketplace.

What Does Trademark Intent To Use Mean?

Individuals or businesses who have created a trademark they plan to use in commerce, but have not yet actually begun to use, will need to file the application to register their trademark on the basis of “intent-to-use. According to the USPTO, an applicant for trademark registration does not need to show actual use in commerce when filing their application on the intent-to-use basis. Instead, the application to register the trademark will need to provide evidence of the intention to use the trademark, in commerce, in connection with the goods or services identified in the application, before the owner may request that mark. With this type of registration, usage is considered a prerequisite. 

Once the trademark has been in use in commerce, then the Amendment to Allege Use 

(AAU) or Statement of Use (SOU) may be filed. This is a sworn statement of the use of the trademark in commerce. These applications must include:

• Two statements indicate that the applicant owns the mark and that the trademark is used in commerce
• Date of first use in connection with the service or goods
• Date of first use in commerce when the applicant used the mark
• List of goods or services that have been claimed for use
• A specimen for each class to show the trademark is in use of commerce for that good or service
• The filing fee
• Verification of all the documents and evidence in the application

These applications can be complicated and confusing for applicants. If you would like to learn more about use in commerce or trademark in use, contact the legal team at Sullivan & Carter, LLP.

Are There Differences Between Trademark Intent To Use Vs. Use In Commerce Applications?

While both applications need goods or services used in commerce, the timing is different. With the actual use (or use in commerce), the applicant must show that the mark is currently in use in commerce. An application to register a trademark that is currently in use must include the date of first use in the filing. For the purposes of selecting the appropriate USPTO Application Filing Basis, “commerce” refers specifically to commerce conducted across state lines, so use in commerce applications are options when the trademark owner has applied the mark to goods or services sold across state lines.

The applicant can file an intent to use application when they are not using the mark in commerce. When filing on the basis of “intent-to-use,” a business can register their trademark and document their priority of ownership, even if they are not yet ready to use the mark in interstate commerce. The intent-to-use basis for filing may make sense when a business has concerns that another party might seek to “preempt” their use and infringe on the original trademark owner’s intellectual property rights.

Why Do You Need To File an Intent-To-Use Trademark?

Filing an intent-to-use application for trademark registration allows applicants to secure a priority filing date for their mark before using it in commerce. The intent-to-use filing basis can have several benefits, such as:

Sets a Priority Date

Filing an application to register a trademark on the basis of intent-to-use places the trademark in the USPTO system. The USPTO rejects applications to register new trademarks when the newly submitted marks are closely similar to marks with existing or pending registrations, so establishing priority may be a good idea when there is reason to suspect that another party might attempt to register the mark, or another that is closely similar.

Provides Better Business Planning

Many companies spend considerable time in extensive planning, branding, and product development stages before launching a product or service. Filing an ITU application early in the process can help them to protect their intended trademarks during this phase.

Allows for Market Research and Testing

Businesses may want to assess the market viability of a potential mark before committing to its use. An intent to use application allows these entities to gauge public response and decide on the trademark's suitability.

Schedule a Consultation With an Intellectual Property Lawyer 

Selecting the wrong application filing basis for trademark registration could affect the application’s outcome. Understanding the difference between trademark intent to use vs. use in commerce may prevent problems in the future. Typically, when an individual has already used the mark, the use in commerce would be the appropriate form. If there is no initial usage date, then the intent to use could be another option. However, choosing the proper filing for a trademark application is only one step in the application process for registering a trademark. Every case has different requirements. To discuss the process and strategy for submitting an application to register your trademark, schedule a consultation with an intellectual property law attorney with Sullivan & Carter, LLP by calling (929) 724-7529 today.