The Value of Intent to Use

//The Value of Intent to Use

The Value of Intent to Use

There are some good reasons to file a trademark application based on the Intent to Use a mark in commerce.

Even if you’re not using the mark yet, once the application registers, your priority date will be the filing date of your application — not the date that you first start using it. So, if you file today based on the intent to use, but you don’t use the mark until next year, your priority date would be the filing date. If there were no Intent to Use application and you started using the mark the next year, your priority date would be that date the next year.

In trademark matters, priority is obviously very important, if not critical, and filing based on the Intent to Use secures that priority.

At the end of an Intent to Use application, the prosecution issues a Notice of Allowance (rather than a registration). It is also important to be aware that once you receive a Notice of Allowance, you have six months to file a Statement of Use. If you’re not using the mark and filing a Statement of Use by the end of that six months, as long as you have good reason to postpone use (such as market research), you generally have five, six-month extensions available to you to be able to request further time in order to be able to demonstrate and file that Statement of Use with the USPTO.

You can file that Intent to Use application and keep the application alive for up to three years after it’s been cleared. That’s a lot of time to be able to claim priority without having to use the mark until you’re ready to hit the marketplace.

Contact me for more information.  

Bill Samuels
PHONE: 212-784-6939
FAX: 212-784-6935

By |2019-08-22T15:29:56+00:00March 20th, 2019|Trademarks|0 Comments

About the Author:

Bill Samuels is a seasoned intellectual property attorney who devotes his practice to tailoring strategies and protection plans to achieve each respective client’s goals and business objectives.

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