Intent-to-Use (ITU) Trademark

One of the critical factors to successful trademark registration is being recognized as the first business to use a trademark. This first-user status is achieved one of two ways: 1) being first to actually use the trademark in association with goods and/or services; or 2) “fictional” priority of actual use legally recognized by filing an intent to use trademark application and maintaining the application until actual use occurs. Actual use means that a person or business is using the trademark on products sold in commerce or associating the trademark with services in advertising or marketing.

Since 1989, the USPTO has allowed applicants to file for trademark registration based on the bona fide intent to use (ITU) their mark. However, an ITU applicant must actually use the mark in commerce before a registration will be granted. Nevertheless, the ITU application is incredibly valuable if you have come up with a catchy name or slogan and want to protect it as an asset of your business. For the trademark application to be accepted, two conditions must be met: 1) the application is filed prior to another business filing their own ITU trademark application for, or actually using, a similar mark on similar goods or services; and 2) the applicant must complete the registration process and begin using the trademark within six months after the USPTO allows the application. This six-month deadline can be extended biannually up to three years provided there are legitimate reasons for the delay. Once proof of actual use is accepted by the USPTO, the trademark is officially placed on the United States Trademark Register.

If you do decide to file an ITU application, it is important to act quickly for you want to establish the earliest date of use as possible. This is especially true when you are investing significant time, money and emotional energy into creating a truly distinctive trademark, or when you plan a significant investment preparing to launch products or marketing campaigns. SHERMAN IP attorneys will thoughtfully examine your unique situation and advise on the best path for the protection of your trademarks.