Paths to Federal Trademark Registration: Use vs. Intent to Use

Understanding Trademark Registration Basics

Trademark registration is a legal process used to protect the exclusive use of a mark, such as a brand name, logo, or slogan, in association with the sale of goods or services. The process of registering a trademark involves filing an application with the U.S. Patent and Trademark Office (USPTO) and meeting certain requirements.

The Actual Use Path (Section 1A)

Trademark registration based on actual use (section 1A) requires that the mark must be actively used in the marketplace in connection with the goods or services for which it is registered. This means that the trademark must be used in the promotion or sale of those goods or services. For example, a company that sells shoes must use the trademark in the advertising, marketing, and sale of the shoes in order to register the trademark.

The Intent to Use Path (Section 1B)

Even if you are not actively using your mark in commerce you may still be eligible for trademark registration. Trademark registration based on intent to use (section 1B) requires that the trademark must still be used in commerce, but there is no requirement that the mark must be actively used in the marketplace currently. This path requires a bona fide intent to use the trademark in the future.

Application Components

The components of your application will be the same:

1. Application specification including:
   • Applicant's domicile and citizenship
   • Date of first use (if applicable)
   • Goods connection
   • Drawing of the mark
2. Verified statement of:
   • Ownership
   • Application accuracy
   • Commerce use/intent
   • No known conflicts
3. Government application fee

Advantages of Intent to Use Applications

There are several advantages to filing an intent to use application:

• Reserve rights before marketplace use
• Begin registration process early
• Secure future trademark rights
• Establish priority filing date
• Create notice through USPTO database

Priority and Protection

The filing date of a Section 1B becomes the effective filing date if the application matures into a registration. Your registration will have nationwide priority over all others except:

• Parties who used the mark before your filing date
• Parties who filed in the USPTO before you
• Parties with earlier priority based on foreign applications

Next Steps

If you are in the process of launching a brand and not quite using the mark in commerce then an intent to use trademark application is a strong option. If you need help with your trademark application do not hesitate to contact Tinch Law.

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