There are a number of reasons why prospective trademark owners may not be using their trademarks. Maybe your idea is in the early inception stage and you want to know if your proposed trademark name is available before starting production and marketing. Perhaps you’re worried that someone else will see your mark and try to steal it before it’s properly secured with federal registration. Whatever the reason, it happens that clients are sometimes unable (or unwilling) to show current use of their mark, but they want to apply for trademark registration nonetheless. The truth is while the U.S. Patent and Trademark Office (USPTO) will allow prospective trademark owners to apply for trademark registration early using an Intent to Use trademark application, you must actually start using your mark before the USPTO will allow the mark to become fully registered.
Unlike domain names, you cannot “hold” a trademark name if you have no intention of actually using it. U.S. trademark law and the USPTO prevents trademark hoarding by requiring proof of actual use before allowing trademark registration.
Federal trademark rights are generally bestowed on the “first to file.” The first party to file at the USPTO gets priority for registration and nationwide priority ownership. An exception exists to this nationwide priority, however, and that is for trademark owners who can show prior ‘common law’ use of the trademark. If a dispute were to arise between a trademark applicant/registrant, and a common law prior user, the first to use the mark would have priority in the geographic region(s) where they can show first use.
If you are not yet using your trademark in connection with your goods or services, an Intent-to-Use (ITU) trademark application allows you to get a jumpstart on the trademarking process until you actually start using the mark. But these ITU applications must be based on a bona fide intent to use the trademark. If you never actually use the mark, you will never obtain trademark registration and your application will become abandoned.
Approximately six (6) months after the ITU application is filed, barring any other issues, the USPTO Examiner will issue a “Notice of Allowance,” which is a provisional approval and request to show use. If you are using the mark, you will submit a Statement of Use and a trademark specimen, showing your trademark as used in connection with your goods or services. This may be product packaging, labels, tags, a website screenshot, signage, brochures, menus, etc. If you are not yet using the mark, you can request a six (6) month extension of time to make use of the mark. You can request additional extensions of time, as needed, until you are ready to make use of the mark in commerce.
For more information on ITU applications or protecting your trademark during the development stages of your business, please contact us for a free consultation with one of our trademark attorneys, (800) 769-7790, or via email.