Use “Intent to Use” Applications to Protect Your Trademarks Early

“Intent to use” trademark registration applications are critical tools for business owners and brand developers.

While the rights available under the Lanham Act attach only after the United States Patent and Trademark Office (“USPTO”) has issued a certificate of registration for the trademark in question, the benefits of this statutory protection for registered trademarks relate back to the date that the registration application is filed. Thus, while protection is not immediate or automatic upon the filing of an application, the filing date is still crucial to establishing “prior rights” in the mark. “Intent to use” applications allow you to obtain a filing date as soon as you develop the intent to use the trademark in commerce.

“Intent to use” trademark registration applications allow business owners to apply for registration of trademarks before they being using the marks in commerce. Intent-to-use applications may be filed so long as the applicant has a “bona fide” intent to use the mark in commerce at the time the application is filed. This allows entrepreneurs and businesses that have adequately researched and cleared their trademarks to begin developing brands around those trademarks while they wait for the trademark registration process to run its course. This is a valuable benefit for both new companies and established businesses seeking to roll out new product lines.

The “bona fide” intent requirement is a key element of the intent-to-use registration provision. This requirement prevents the filing of a trademark registration application for the sole purpose of acquiring a potentially-desirable trademark absent any real intent to use the mark in commerce. While an applied-for mark does not ultimately have to be adopted, an application filed in bad faith can expose the applicant to liability for fraud perpetrated against the USPTO.

Brand developers should clear their proposed trademarks early in the process in order to facilitate the prompt filing of “intent to use” trademark registration applications.

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