What is an Intent to Use Trademark Application? – Transcript

[Intro Music] I love you, but I’m not your lawyer. This is for your educational purposes only and does not constitute legal advice. You should not act, or refrain from acting, on the basis of this content without first consulting a lawyer.

Annette

So you have this amazing name for your next product, your next service, your business, or maybe even a course, but you’re not quite ready to launch it out into the world. But you’re worried, “Well, what if somebody else comes in the meantime and takes that name?” Is there anything that you can do in order to protect that name until you’re ready to use it? 

In this episode, I want to introduce you to a little unknown tip about how you can essentially reserve a trademark or a name that you want to use in connection with a certain good or certain service until you’re ready to use it. 

Now, of you’ve caught some of my other episodes, you know a lot about trademarks. You know that in order to actually register a trademark with the US Patent and Trademark Office, one of the requirements is that that mark has to be currently in-use meaning that you have to be using it. 

Let’s say you are using a mark in connection with apparel. You have to show proof or what they call “a specimen,” showing that you are using this mark in connection with apparel. But in the circumstances of this episode – what if you’re not ready to do it, is there anything you can do? Yes, there is.

One of the application types that you can file is called an ”Intent to Use” application. Basically, this is letting the Trademark Office know, “Hey Trademark Office. I have this mark. I’m not using it yet. But I intend to use it in the near future. Can you just please reserve my place in line?” I mean it’s not really saying that but in layman’s terms that’s essentially what you’re saying. 

Now, an “Intent to Use” application is great if you are super, super attached to a name, you are ready to put money behind it, and you just want to buy yourself a little bit more time until you’re ready to launch that product or that service. 

A few important things to note about “Intent to Use” applications. First of all, just because your “Intent to Use” application gets approved, that does not mean that you have an officially registered trademark. There are still few more steps you need to take in order to get that trademark officially registered. With an “Intent to Use” application, you can also get up to five 6-month extensions. Meaning let’s say you’re not ready to use it in the first year. You can request multiple extensions of time until you are. However there is a limit, so you can’t sit on that name forever. You have to use it within the prescribed period of time or else you are probably going to have to abandon that application. And finally, just because your ”Intent to Use” application gets approved, that does not mean that you have a registered trademark, because, as you already know, in order to get an officially registered trademark, we’re going to have to show the Trademark Office proof of its use, so there is subsequent applications and paperwork you’re going to need to file that show and demonstrate that, “Hey Trademark Office, I’m actually now using this mark in connection with these identified goods and services, so you can please just go ahead and go through the process and let’s get this trademark registered.” 

So why would you want to get an “Intent to Use” application? Well, as I said before, if you’re really attached to a name, it’s a real contender, and you don’t want to risk potentially losing it to somebody else, then you might consider using this cool little tool that we have in order to reserve it. I like to think of it as – let’s say you’re waiting in line to get first dibs on tickets to your favorite concert, and the doors haven’t opened yet, but they’re going to open any minute now and so you realize, “Holy moly, I left my wallet in the car!” So you ask your friend to hold your spot in line while you run to the car and grab your wallet, and you can come back and hopefully in time for those doors to open for you to get first dibs on those concert tickets. 

Another really concrete example: let’s say on January 1st, you go ahead and you file an “Intent to Use” application for the term “spasmatic” for apparel. Then, on March 1st, somebody else comes along and files an “In Use” application for “spasmatic” in connection with apparel, and let’s say your application goes through, it gets approved, and you request all the necessary extensions of time, and let’s say you don’t actually launch your product and your clothing line until December 1st of that year. And when you do, you then go ahead and file the necessary paperwork with the Trademark Office, showing to them that ”Hey, I am actually using this mark now in connection with apparel.” Well, because you filed an ”Intent to Use” on January 1st, it goes ahead and that, like I said, it holds your space in line, so you have first dibs to using the term  “spasmatic” in connection with apparel. 

But let’s say the example was reversed. If let’s say, you know, it’s another company comes on March 1st and files an application, and then you file your “Intent to Use” application on April 1st. Well, chances are your application is going to get denied because of the similarity of names, the similarity of products, and the likelihood of confusion that it’s going to create. 

So it can be a very powerful tool to use if you have a certain name that is going to be very important to you and your business. Now to learn more about trademarks and other legal nuggets that you’re going to need for your business, head on over to the website, where I have tons of great resources waiting for you. 

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