Updated November 19, 2020:

What Is an Intent to Use Trademark?

An intent to use (ITU) trademark application shows a company's intent to use a trademark before actually putting it into use. The company must then put the mark into actual use within six months of the issuance of a Notice of Allowance.

Under Section 1(b) of the Lanham Act, there are two types of trademark applications that can be submitted to the United States Patent and Trademark Office (USPTO). They are intent to use (ITU) and statement of use (SOU).

The advantage of the ITU is that the filing date serves as the first date of the use of the mark. This assumes that the applicant puts the mark into actual use and completes the application process within six months. This status and indication of intent is regulated by §1(b) of the Trademark Act, 15 U.S.C. §1051(b). Some trademark professionals refer to the ITU application as the initiation of the trademark.

A company filing an ITU trademark application does not have to include a specimen at that time, but must include one when filing the subsequent statement of use.

When Is an Intent to Use Trademark Application Made?

The Intent to Use Trademark Application is filed prior to commencement of use. A company must begin using a trademark before a statement of use (SOU) is filed since the SOU has to state the first use dates which must be before or on the same filing date of the SOU.

The six months between the ITU and SOU may be used by the company to decide how to put the mark into use once it is approved.

An Amendment to Allege Use (AAU) is the submission of use filed before the examining attorney approves the mark for publication. If the examiner approves the mark for publication, then the company must wait until a Notice of Allowance, also called a Statement of Use, is issued after the publication period ends without opposition from third parties.

The cost of an intent to use trademark application is the same as for the in-use application; however, filing an Amendment to Allege Use or a Statement of Use will cost an extra $100. Each additional six-month extension for filing a statement of use costs $125 for filing electronically per class or $225 to file over paper per class.

Reasons for Using an Intent to Use Trademark

One of the main reasons companies choose to make an intent to use trademark application is to register their mark before other companies can. Once their SOU is submitted, they can get their application approved by the USPTO before ones that were filed later.

This procedure also makes it easier to avoid common law trademark infringement. If another company is already using the mark but it is not registered, it will lose its grounds for legal procedures for infringement.

Reserving the trademark through this application will protect the company from "trademark trolls." These individuals or companies spy on the USPTO database and identify trademarks that are not yet registered.

Further, if the company has not used the mark in commerce before and only starts using it after the intent to use application is made, it cannot be held liable for trademark infringement.

Filing an intent to use application is also beneficial for companies that would like to save time and money. In case the USPTO declines the application, the company can create a new mark and rebrand its products at a lower cost.

Reasons for Not Using an Intent to Use Trademark

If the mark is already being used by your company, or you plan to start using it right away, it is not recommended to file an ITU trademark application. File an actual use application instead.

If a company is not 100 percent sure about wanting to use the mark, it is not recommended to file an application. The law states that the trademark use intent must be proven and the company must start using the mark in association with its products or services within six months.

Companies that are not confident about filing an Amendment to Allege Use or a Statement of Use application within six months should seek professional advice before proceeding. Consult with an experienced trademark professional before filing an application.

You should not file an intent to use application if your mark is legally weak. It may use common words in a common way or it may literally describe your product. In this case, you should put the mark into use until you can show that the public associates it with your product and then file an actual use application.

Common Mistakes

One of the main mistakes companies make with intent to use trademark applications is that they fail to demonstrate their bona fide intended use of the mark. The United States Patent and Trademark Office often requests samples and product images that the company wants to use the mark for, and failing to provide these will result in the rejection of the application.

In some cases, companies file applications "just in case" and do not start using the mark, or change their mind about the trademark. This can result in the rejection of the application.

Performing trademark searches too early and too often can get other companies interested in the mark, and result in them registering it first.

Not documenting the intended use and the registration of the mark can have serious legal consequences. Always download and keep copies of correspondence from the United States Patent and Trademark Office, and check the status of the registration online.

If you hastily or frivolously file an intent to use application and you are sued by an entity that has a right to a similar trademark, a court might decide against your ability to use the mark (for example, see M.Z. Berger & Co. v. Swatch AG, No. 2014-1219, 2015 WL 3499267). The same is true for political activist slogans or representations. For instance, the Trademark Office declined applications for marks such as "Je Suis Charlie" and "Ice Bucket Challenge" on the grounds that they were not used solely by the applicants.

Frequently Asked Questions

  • When should I file the intent to use application?

You should only file the application when you are intending to use the mark in the next six months and can provide evidence for this to the United States Patent and Trademark Office.

  • Who decides on the intent to use application?

A trademark examiner at the USPTO reviews the submission and attached evidence and makes the decision.

  • How long does it take to get a Notice of Allowance?

It usually takes around 12 weeks from the date of submission of an Amendment to Allege Use or a Statement of Use.

Find out more about trademark applications and receive legal help and guidance by contacting a lawyer at UpCounsel.