There are two main types of trademark applications that may be filed with the USPTO: 1.) a “Use in Commerce” application; and 2.) an “Intent to Use” application.
An “Intent to Use” (ITU) trademark application is the correct application to file when the applicant has not started using the proposed trademark in commerce. Some people refer to ITU applications as more or less a trademark reservation, which can mature into a registration so long as the applicant subsequently files a “Statement of Use” with the USPTO once the applicant starts to actually use the trademark in commerce.
From a startup perspective, ITU trademark applications are beneficial because they allow one to claim a trademark before manufacturing or marketing the corresponding good or service. Thus, the applicant is able to secure an earlier filing date and therefore priority over future applicants who attempt to register the same or a similar mark. This is crucial for startup companies who often seek to register trademarks during the business formation process or during the testing stages of a new product. In the U.S. we have a first-to-file registration system, so the filing date is very important if a conflict arises.
What Qualifies as Use in Commerce?
According to the USPTO, “use in commerce” means that the applicant is currently using the trademark in the sale or transport of goods or the rendering of services in interstate commerce between more than one U.S. state, or between the U.S. and another country.
Use in commerce is generally not: 1.) registering a domain name 2.) registering a business entity name 3.) opening a business bank account. 4.) printing business cards 5.) producing a demo or beta version (None of these involve the sale or transport of goods and/or rendering of services).
Disadvantages of an ITU trademark application
One drawback of an ITU application is that they are more expensive. There are additional legal fees and filing fees associated with filing the supplemental Statement of Use. Also, if the applicant does not start actually using the trademark within 6 months from the notice of allowance, the applicant will need to file a request for an extension of time. Aside from the additional fees and forms associated with an ITU application, they provide the same level of trademark rights as a use in commerce application so long as it matures into a registration.
Advantages of an ITU trademark application
The main advantage of the ITU application is the ability to secure the earliest filing date possible. Over a thousand trademark applications are filed with the USPTO everyday, so once you have decided on the mark you want to use and performed a clearance search then we recommend filing either type of application as soon as possible.
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