Trademarks: Use in commerce is the key to federal registration, but an intent-to-use application can provide you with the significant advantage of holding your place in line and preserving priority prior to actual use.
By Cher Gregoire, Esq.
Your business can obtain certain protections and rights in your trademark by registering the mark with the United States Patent and Trademark Office (USPTO) – but you can’t get a registered mark without first establishing use of the mark in connection with the goods or services at issue in commerce.
The “use in commerce” is a key requirement to obtaining a federally registered trademark, and generally means that you have sold a product to the public in interstate commerce with the mark attached to it or offered services under the mark to the public in interstate commerce.
Importantly, however, you don’t have to actually use the mark in commerce in order to submit an application to register a trademark. Instead, you can file a Section 1(b) “intent-to-use” application which allows you, within a certain time-period, to eventually show the USPTO requisite use of the mark in commerce to obtain registration.
The intent-to-use application will essentially hold your place in line with the USPTO, and prevent someone else from obtaining registration for the same or similar trademark if filed after the date of your application. Further, your rights in your mark will be retroactive to the filing date of your intent-to-use application. Thus, an intent-to-use application can give you a significant procedural and competitive advantage by securing an earlier filing date or “priority date” for your mark before actual use in connection with a new business or prior to launching a new product.