Trademarks are a critical component of many businesses. These unique marks identify the brand’s goods or services, create a sense of familiarity in consumers, and once registered, confer several legal benefits the trademark owner can enforce in court if needed. When it comes to registration, however, the question many business owners ask is: When should I register my trademark? When filing an application to register a trademark, intent to use vs. use in commerce makes a difference to the expense, the registration process itself, and even the date of first use of the mark. If you still have other questions regarding registering a trademark, contact Grabbe Law Office to schedule a free 15-minute consultation to discuss your trademark needs with an experienced Kansas trademark attorney.                                                                                                                                                                                     

What Is Intent to Use or Use in Commerce?

When an individual or business files an application to register a trademark, they must choose a filing basis. The filing basis is the basis on which the trademark owner is registering the trademark. Under 37 U.S.C. § 2.34, domestic applicants for trademark registration may list either trademark intent to use or active use in commerce as their filing basis.If a trademark application is filed with a basis that does not match its actual status (in use vs. preparation for use), it will not satisfy the legal requirements for a complete application, and the application for trademark registration may be rejected.

Trademark Intent to Use

Intent to use means that the trademark owner is not yet using their trademark to sell or transport goods outside their state, but they intend to put such use into effect. A requirement of trademark intent to use is that the trademark owner has a bona fide intention to start using the trademark.

As part of the application process, the trademark owner will be issued a Notice of Allowance, after which they have six months to start using the trademark and update their application by submitting evidence showing that the mark now meets the “use in commerce” standard.. Trademark owners can request additional six-month extensions as needed, giving them up to three years to begin using the mark, according to the United States Patent and Trademark Office (USPTO); however, businesses owners considering this option should be aware that there will be additional filing fees associated with each extension request.

Use in Commerce

Use in commerce means selling or transporting goods outside of the state in which the business is registered, or providing services to customers who live outside the state the seller is located in. While trademark owners can apply for trademark registration on both the state and federal level based on using the mark in commerce, it is important to note that for a federal trademark registration, this use specifically must cross state lines, as intrastate commerce (commerce that happens between two parties within a single state) is typically regulated not by the United States Department of Commerce, but by the appropriate authorities in that state.

What Qualifies as Use in Commerce for a Trademark?

The Trademark Act of 1946 states that commerce, for purposes of registering a trademark, means all commerce that Congress can lawfully regulate. The same statute additionally characterizes use in commerce as the genuine utilization of a mark in the regular conduct of business. Registration solely for the purpose of reserving rights to a mark is not considered to be an instance of using the trademark in commerce.

In order to claim use in commerce, the following criteria must be met:

●       Mark must be displayed on goods, goods packaging, or associated displays

●       Goods must be sold or transported in the ordinary course of trade when practical

●       Mark must be employed during promotion or sale of associated services

●       Services must be provided during commercial activity

●       Must show actual use of the mark, not token or sham use (examples of token or sham use include providing services for little or no money, selling only to family or friends, every item sold has been returned, or sporadic sales)

●       Though there is no specific quantity required, sales made must be meaningful (free promotional offerings and small numbers of sales may be considered meaningful if there is proper documentation of marketing and other efforts indicating a good faith effort to establish a trade)

Should I File an Intent To Use Trademark?

Legally, trademark owners are not required to register a trademark with the state or the USPTO. By devising an original mark and using it to distinguish their own goods or services from others in the marketplace, a business owner establishes certain  common law rights to that mark. However, trademark registration can make it much easier to protect those intellectual property rights at law. A proactive business owner who is aware of these advantages may wish to secure them for a trademark they have not yet begun to use in interstate commerce.

When Can I File an Intent To Use Trademark?

If the owner of the mark has a good faith intention of using it in the future, they may consider filing the initial application to register their trademark on the “intent to use” basis. There can be benefits to filing a trademark intent to use application, including establishing a filing date. The “filing date” on an application for trademark registration gives the mark priority over someone else’s attempt to register the same or a similar mark, so this particular benefit can be especially helpful if the trademark owner has reason to suspect competitors may attempt to preempt the rightful owner’s trademark registration.

Why Should I Not File an Intent To Use Trademark?

Before submitting an application for trademark registration with an intent to use filing basis, trademark owners should also consider that the intent to use application is generally more expensive than filing with a use in commerce filing basis. The costs can become even more substantial if the applicant needs to purchase filing extensions before showing that they are using the mark in commerce. IP owners should also consider that if they file an intent to use application and later abandon the application, they will lose the advantage of the original filing date as the date of first use. This means that someone else may be able to claim and register the mark instead. If you are uncertain about whether to file an intent to use trademark application, Grabbe Law Office may be able to assist you in weighing the advantages and disadvantages to make a decision that is right for your business needs.

Are There Other Filing Bases I Can Use?

Trademark intent to use and use in commerce are the filing bases typically used for domestic applicants, but they are just two of four filing bases that the USPTO indicates can be used to register a trademark. The other two are a foreign trademark registration and a foreign application. Foreign registration applies if the trademark owner owns the registration of the same trademark in another country. Foreign application applies if the trademark owner has already filed an application to register the same trademark in another country within six months of filing their United States application.

For many trademark owners, either intent to use or use in commerce are the only filing bases that will apply. Due to the complexity of a trademark application and the fact that an application filed with the wrong filing basis could be rejected, trademark owners may want to consider meeting with an attorney to discuss their circumstances and ensure their application is handled appropriately.

Can I Include More Than One Filing Basis in a Trademark Application?

If the application and trademark meets the requirements for each filing basis, trademark owners may include more than one filing basis on their trademark application. However, owners cannot assert use in commerce and intent to use in the same application for identical goods and services.

As an example of how this combination of filing bases works in practice: A trademark owner may file using the filing bases of a foreign registration because they own the trademark in another country and the intent to use basis because they are preparing to sell their products in the United States for the first time. They cannot use the filing bases of use in commerce because they have been selling their products in the state of Kansas and intent to use because they are preparing to sell their products throughout the United States.

Do You Have Questions About Registering Your Trademark?

Registering a trademark is optional, but many trademark owners opt to pursue registration with the USPTO because federal trademark registration comes with many benefits. Ensuring that you use the right filing basis is just one step at which your application could be rejected. Choosing whether to file a trademark intent to use application or wait until you can file with a use in commerce filing basis can be a difficult decision. To discuss the pros and cons with an experienced Kansas trademark attorney, or to seek answers to other questions regarding registering your trademark, consider scheduling a free 15-minute consultation with Grabbe Law Office.