In the U.S., trademark rights are acquired through use of a mark in commerce. But the United States Patent and Trademark Office (“USPTO”) allows an applicant to file to register a trademark that the applicant intends to use in the future. This can be a great way to reserve rights in a trademark that an applicant may not be using right now but plan to begin using within the next three years. Additionally, because trademarks are registered in connection with specific goods or services, businesses can use intent to use filings to reserve important marks for goods and services the business plans to expand into in the future. One major benefit is that once an intent to use application registers, the owner’s rights are treated as going back to the date the intent to use application was filed, known as “constructive priority.”
An intent to use application is similar to a standard trademark registration application. The process is identical up until the application completes the opposition period. At that point, the USPTO issues a notice of allowance. The applicant must then show use proof that the mark is being used in commerce to obtain full registration. The applicant has six months from the date of allowance to show use, but can request additional six month extensions for a total of three years from the date of the notice of allowance.
Proof of use requires showing that the applicant is actually using the trademark on a product. Marketing material or mockups of product labels won’t suffice. Because insufficient proof of use can prevent an application from registering or void a registration many years down the road, this is not a step to take lightly. Our intellectual property team can advise on proper specimens of use as part of an intent to use application.
