This type of application is very common and is usually filed when a trademark applicant has not yet used a mark in commerce in the US or when a trademark applicant wants to file the application in advance of determining when the first date of use occurred. This type of application is very beneficial in securing potential trademark rights as soon as possible.
For examination purposes by the government trademark attorney, the intent to use application is treated the same as an application filed based on use. Once any issues regarding registration have been positively resolved with the government trademark attorney, the application is published to provide the public with an opportunity to oppose the application. If no member of the public opposes the application after publication, a notice of allowance is mailed. This notice will require that the applicant prove actual use in commerce in the US prior to registration. Use is proved by filing a satisfactory statement of use (section 8 declaration).
Typically, a notice of allowance may occur within six to twelve months of filing the application if there are no substantive rejections from the trademark attorney. The trademark applicant has six months to file the statement of use from the date that the notice of allowance was issued. If a statement of use cannot be filed yet, then it is necessary to file a petition for an extension of time to file a statement of use.
Provided that the necessary petitions are timely filed, the trademark applicant has up to three years from the mailing of the notice of allowance to file a statement of use. Once the statement of use is filed, the application will be registered in due course.
The application can be filed in advance of use as long as there is a bone fide intent to use the mark in commerce in the United States of America. Then after a notice of allowance is received and the statement of use is filed, the registered trademark rights will be effective as of the filing date of the application. This is true even though the use of the mark may not occur until years after the application is filed. That is one of the big advantages of filing an intent to use application.
When there is a trademark dispute one of the most important issues is which party has superior rights. That is, whose rights in the mark vested earlier. Filing an intent to use application rather than waiting for actual use allows an applicant to secure an earlier date of vested trademark rights which can be very valuable.
If you have any questions regarding your trademarks, patents or other intellectual property matters, please contact Garcia-Zamor Intellectual Property Law, LLC.
