Intent to Use vs. Use-based
Trademark rights are conferred upon a source identifying word, sound, smell, etc. which is being lawfully used in commerce, but can you reserve a mark before you use it?
Articles often say that companies, such as Apple, have registered several marks for a new product before they bring it to market. How are they able to reserve a product name without making a valid use in commerce? They reserve a mark by filing an intent to use application under section 1 (b) of the Lanham Act.
Use-based Applications are the Norm
When registering a trademark–usually–the mark is already being used in commerce. In this case it’s simple to show that the mark is being used, and register the mark under section 1 (a) of the Lanham Act. You submit the Specimen of Use with the application and wait for the Office to examine the application, hopefully getting a notice of allowance.
Intent to Use allows reservation of marks
What can you do when you can’t use section 1 (a)? You can file under section 1 (b). Section 1 (b) permits the applicant to register marks when the applicant has a bona fide intention to use the mark in commerce. Intent to use applications allow for temporary reservation of marks, so market testing can be done and mock-ups built.
Applications which use section 1 (b) must submit a statement of use and specimen to the Trademark Office within one of three time periods. First, they may submit the statement of use before the application is approved for publication. Second, the applicant may submit a statement within six months of the Notice of Allowance. Finally, if the applicant fails to meet the first two deadlines, they may still file within any extension period granted by the Trademark Office.
If the applicant meets these requirements, they receive a registration on the Principal Register, and can use the ® symbol on the mark. Also, they receive other significant benefits.
When to use an ITU?
Registrants use ITU’s when they, for whatever reason, don’t have a valid use in commerce. For example, a company will use an ITU when the product is still in development and doesn’t have the required use in commerce.
ITU applications are a valuable resource for proactive applicants to begin the registration process for marks that don’t qualify for registration under section 1 (a). ITUs allow for reservation of trademark rights, while permitting flexibility on the part of the company to perform market research and develop mock-ups. If you have any questions about ITUs specifically, or trademarks generally, you can contact me here.