A Section 1(b) Intent-to-Use trademark application means that a person or legal entity has a “bona fide” intent to use the trademark “in commerce” in the near future. File an Intent-to-Use trademark application if you: (1) are not using your trademark in commerce; (2) are concerned about someone taking your mark; or (3) meet all three of the clearly defined Intent-to-Use requirements discussed below.

If you begin an application with the United States Patent and Trademark Office (USPTO)’s TEAS System, you will encounter the following:

• “1(a) – Actually using the mark in commerce now”
• “1(b) – No use of mark yet, intending to use”
• “44(d) – Foreign application exists for the same goods/services”
• “44(e) – Foreign registration exists for the same goods/services”

Section 44(d) and Section 44(e) involve foreign applications/registrations filed in the US. In this post, I cover only the first two: Section 1(a) and Section 1(b), with a heavy emphasis on Section 1(b) – Intent-to-Use.

I. The Two Common Trademark Applications: 1(a) Use in Commerce vs. 1(b) Intent-to-Use

There are generally two common types of trademark applications available:

• Section 1(a) – Use in Commerce Trademark Application
• Section 1(b) – Intent-to-Use Trademark Application

Briefly, Section 1(a) alleges that the trademark is currently in use in commerce by the applicant and does not entail an additional fee. A Section 1(a) Use in Commerce application requires the applicant to provide proof of use. Providing trademarks on goods or in association of services, and webpage printouts or photographs of the same, suffices as proof of use.

On the other hand, a Section 1(b) Intent-to-Use means that the applicant is: (1) currently not using the trademarking in a manner that meets the “use in commerce” requirement”; (2) the applicant has a legitimate intention to use the mark in commerce in the near future; and (3) applicant will (a) submit an additional $100 fee per International Class of goods or services at that later date with (b) appropriate specimens at that time.

• Related: What are Trademarks and What Do They Protect? [2021]

II. Pros and Cons to Filing an Intent-to-Use Trademark Application

Generally, there are three benefits and one drawback.

A. Benefits

The three main benefits of an Intent-to-Use trademark application are (1) public notice and priority rights; (2) retroactive protection; and (3) lower risk. I discuss each below.

1. Constructive Notice to the Public and Priority Rights

First, it allows trademark owners to provide the general public “constructive notice” regarding their Intent-to-Use a trademark application. If you file an Intent-to-Use application, it will show up in the UPSTO database within five to seven days, the same time as it would show with a Use in Commerce application. Additionally, filing an Intent-to-Use application, instead of waiting to meet the use in commerce requirement provides a time and priority advantage. While the United States is a “first to use” country, filing an Intent-to-Use trademark application will prevent another individual from successfully registering their trademark with the USPTO while yours is pending. If the USPTO sees a conflict with your mark, it will suspend the conflicting mark.

2. Retroactive Protection from the Date of Filing

Second, if your trademark Intent-to-Use application succeeds to registration, it will provide protection retroactively. In plain English, protection starts from the filing date. Of course, the same is true of Use in Commerce applications. However, this is a particularly useful benefit for a person or business that needs protection as soon as possible.

3. Lower Risk

For sophisticated businesses with large marketing budgets and new products, it is strategically wise to file an Intent-to-Use trademark application. The reason for this stems from the fact that few, if any sophisticated business will wait until product launch to risk jeopardizing the loss of trademark rights. So, for example, large companies will file an Intent-to-Use trademark application to secure priority over a given trademark name, develop and market a product, and then roll out a launch where the product is available to an end user under that trademark. This mitigates the potential risk associated with losing a trademark name by waiting until the product release date to file a trademark.

B. Cons: Cost to Maintain

The negative associated with an Intent-to-Use application is the extra fee due in several months. Specifically, the USPTO will require $100 per International Class of goods or services within six months from the date your first Notice of Allowance issues. The USPTO will also require submission of specimens of use under either an Amendment to Allege Use or a Statement of Use. If, for any reason you have not used the trademark by that time, you can request a six-month extension for $125 per International Class. There are a total of five extensions for total time period of 36 months (or three years) to prove use in commerce ((5 extensions x 6 months) + 6 months initial time).

• Related: How Long Does It Take to Get a Trademark? [2021]

III. If You are Not Yet Selling Goods or Services, File an Intent-to-Use Trademark Application

In trademark law, an “Intent-to-Use” is a legal term for a type of trademark application. It means that the entity or person intends to use a trademark in the near future, but is currently not using the trademark on goods or services. A person must use a trademark or risk the trademark’s forfeiture. This means that trademarks are a use-it-or-lose-it proposition.

The USPTO describes Intent-to-Use as: “[a] bona fide intention to use [a] mark in commerce with . . . goods and/or services in the near future.” By now, you likely have come to a screen that shows two options:

• “Section 1(a) – Actually using the mark in commerce now”
• “Section 1(b) – No use of mark yet, intending to use”

The elements of an Intent-to-Use Application are:

• (1) a bona fide intent-to-use;
• (2) a mark in commerce; and
• (3) with goods and services in the near future.

Below, I will provide an explanation of all the relevant points, so you can determine if filing an Intent-to-Use trademark application or a Use in Commerce trademark application is right to protect your mark. As we go through each element, see if you can determine which application applies to you: Use In Commerce or Intent-to-Use.

A. Bona Fide Intention to Use

The USPTO has a public interest in ensuring bona fide use. In fact, part of the primary trademark statute, Section of 1 of The Lanham Act of 1946, explains that the USPTO’s purpose in relation to trademarks:

A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register . . . .

Section 1 of the Lanham Act 15 U.S.C. §1051(b); see also 37 C.F.R. § 2.34. The public interest at issue is “squatting,” or taking title to a trademark without the intention to use it. Additionally, merely communicating to another individual a vague Intent-to-Use a trademark confers no right to use a trademark. Zazu Designs v. L’ORÉAL, SA, 979 F. 2d 499, 504 (7th Cir. 1992). In contrast, a Use in Commerce Application has no similar “intention” element.

B. “In Commerce” Requirement

In commerce (commonly called “Use in Commerce”) means using the mark in connection with the goods or services. “'[U]se in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” See TEMP §901.02. The USPTO will root out trademarks that are reserved for “token use.” Id. (explaining what “bona fide use in the ordinary course of trade means”). “Use in commerce” can vary from one industry to another. For instance, a company that makes seasonal sales, such as Christmas trees, or infrequent sales, such as medicine for clinical trials, qualify. Both of these are examples of use in commerce.

1. What “Use In Commerce” Means: Territorial, Interstate, and Foreign Commerce

Here, “use in commerce” means using the mark in “interstate commerce,” which is commerce Congress can regulate. Interstate commerce involves commerce between two states (example: sale of toothbrushes from a Texas store to a Florida resident). Territorial commerce is commerce that involves a U.S. state and a U.S. territory (example: sale of oranges from Florida to residents of Puerto Rico, a U.S. territory). Foreign commerce, of course, is commerce between the United States and a foreign nation (example: software as a service (SaaS) sale between a U.S.-headquartered company and a Japan-based web developer).

2. Use in Commerce Examples:

Congress can regulate commerce outside of your state, commonwealth, territory, or country. For example, a Portland, Oregon shoe store selling two sneakers across state lines to San Jose, California is interstate commerce. However, purely intrastate commerce, or commerce within a state would not fall within the “use in commerce” requirement. If the same store sells one pair of sneakers each to two Oregon residents, i.e., intrastate, it is not engaging in interstate commerce, and therefore there is no “use in commerce.” However, if the same shoe store sold two sneakers to two out-of-state residents who came to Portland, Oregon for a day, the courts would view this as “interstate commerce.” See Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986, 993, 120 USPQ2d 1640, 1645 (Fed. Cir. 2016).

3. Proving of “Use in Commerce”: Statement of Use/Amendment to Allege Use

Specimens, or examples of how you use your trademark in commerce, are not required to file an Intent-to-Use trademark application. However, a few months after the application is filed, the USPTO will issue a Notice of Allowance. Once the Notice of Allowance issues, applicants have six months to file a Statement of Use, or an Amendment to Allege Use. Appropriate specimens are also required at that time. The key difference between a Statement of Use or an Amendment to Allege Use is that an Amendment to Allege Use may be filed after the trademark filing date, but prior to publication of the mark.

4. “Blackout Period”

The period after publication, and the Notice of Allowance issuance, is known as the “Blackout Period.” The USPTO will not accept Amendment to Allege Use filings during this time. If the Amendment to Allege Use is rejected or the Amendment to Allege Use is filed but withdrawn, the USPTO shall issue a Notice of Allowance. A Statement of Use may only be filed after a Notice of Allowance.

5. In Commerce: Summary

In summary, you may prove “use in commerce” by:

• (1) filing a Statement of Use within six months of your Notice of Allowance;
• (2) filing an Amendment to Allege Use before publication; or
• (3) within a short period of time after an extension or after the Notice of Allowance.

If you do not provide proof and appropriate fees by the deadline, the trademark application will be abandoned.

C. With Goods and Services in the Near Future

To meet the requirement, your trademark must be associated with at least one International Class of goods or services. To find your International Class, search the Trademark ID Manual (TMID).

• International Classes 1 through 34 are goods.
• International Classes 35 through 45 are services.

To prove use in commerce, provide proof showing the trademark affixed to the goods or services. For example, if you are advertising a software service, submit webpage specimens showing the trademark with advertising. If your trademark is on physical goods, a label or tags bearing the trademark is acceptable.

• Related: TEAS Plus vs Standard: Pick the Right Trademark Application

IV. How Do I Submit Proof for my Intent-to-Use Trademark Application?

Typically, a webpage saved as a PDF will suffice for an appropriate specimen. The trademark must be closely associated with the goods, products, or services that you sell. The webpage must be accessible and the PDF (a jpg. file is also acceptable so long as it has a date stamp) must be uploaded. If the goods, products, or services are sold in person and are not online, then photographs of packaging, labels, shipping labels and stationery with the trademark are acceptable alternatives. Remember, the goods and services must be sold “in commerce” which means commerce that Congress can regulate.

V. Conclusion

In closing, file an Intent-to-Use trademark application if goods or services are not currently sold under your trademark. You represent under oath that there is a true intent to use the trademark in commerce, and that it is not a “token” attempt to acquire a trademark. Additionally, an Intent-to-Use trademark application requires proof of sale of the goods or services “in commerce.” The benefits of an Intent-to-Use trademark application are: (1) priority rights; (2) public notice; and (3) lower risk. The negative is the additional $100 fee per International Class of goods or services due within six months after receipt of a Notice of Allowance.

Contact Syed Law today if you would like us to help you with your Intent-to-Use trademark application.