Intent to Use vs Use in Commerce

There are two types of federal trademark applications that businesses can apply for – “Actual Use in Commerce” and “Intent to Use” applications.

The main difference between the two types of applications is whether you are currently actively using the mark in commerce and offering goods or services for sale to the public not. To determine which one your business will need to file for a given mark, let’s differentiate between the two. 

The Actual Use application (1a) is filed by applicants who are actively selling goods and services using their trademark. Under the United States Patent and Trademark Office (USPTO) regulations, a “Used in Commerce” application means that the trademark is used for conducting business or commerce either within or across states or between the United States and another country.

Once the application is approved, the trademark must appear as follows:

  • Goods: For goods that your business manufactures and/or sells, the trademark must appear on the goods themselves, the containers, or any display that is associated with said goods to show the origin of the goods. Moreover, the goods must be transported or sold in “commerce”. For example, the front of a t-shirt does not suffice, it must be the label, to show it is the brand of the clothing and not ornamentation.
  • Services: For services that your business offers, the trademark must appear in any advertisement the service where it is clearly offered to the public for purchase.

Intent to Use Application

On the other hand, the Intent to Use (1b) application is to be filed by applicants who are not actively using the trademark in business or commerce yet. This means that the trademark is not yet used as of now to sell goods or services or has only used the mark within the boundaries of a single state, but the applicant has genuine intention to use the trademark across state line in interstate commerce in the future.

If your business follows this filing basis, you must start using the trademark commercially before the USPTO registers the trademark. You will also have to file what is called an Allegation of Use along with a specimen showing the use. This is a sworn statement which attests to using the trademark in commerce.

  • Either on or before the date the trademark is approved for publication by the examining attorney from the USPTO
  • Either on or within six (6) months the date the Notice of Allowance is issued by the USPTO, which is generally around 12 weeks from the date of publication. This period may be extended five additional times for a small fee in six (6) month increments.

The major benefit of filing an Intent to Use application is that you can reserve the trademark before your goods and/or services are ready to hit the market. In other words, before they can be transported or sold in commerce. This preserves your spot on the USPTO trademark register and gives your mark priority over any later filed trademarks.

Filing a trademark application and making sure that all the documentation is provided, can be a confusing process but with an experienced attorney guiding you, the route to success can be very smooth.

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Posted in: Intellectual Property - Trademarks