Trademark Registration - Basis of Filing
"Use in Commerce" vs "Intent to Use"

CLICK HERE for a general overview of trademarks.

Normally trademark protection is not granted unless you are actually using the mark in conjunction with the sale of goods or services (called "use in commerce").  If the trademark is not yet actually being used "in commerce" there is an alternate basis of filing that can provide protection for a limited period of time called "intent to use"

"Use in Commerce" - filing basis 1(a)

• If the mark is already used in conjunction with the actual sale of goods or services the application can be filed under the "used in commerce" basis.


• SPECIMENS REQUIRED: 
  
  
  • "Specimens" proving "use in commerce" must be included with the registration application.
  
  
  • Specimens are scanned images, digital photographs or screen captures from a browser that are uploaded into the on-line trademark application.  A specimen is a real-life sample of how the mark is actually being used in the marketplace.
  
  
  • CLICK HERE for a page on the government's website providing detailed information on the specimen requirement

"Intent to Use" - filing basis 1(b)

• If the mark is NOT yet being used "in commerce" (or if there are no specimens proving such use) BUT it is expected to be so used within the next 6 to 10 months a registration application may be filed on an "intent to use" basis


• An alternative, of course, is to simply hold off on filing until such time as the mark is actually being used in commerce


• SPECIMENS NOT INITIALLY REQUIRED: 
  
  
  • Specimens are NOT required when filing an "Intent to Use" application .  But, specimens will eventually be required when the "Allegation of Use" is submitted (see below)
  
  
• WHAT HAPPENS AFTER FILING


• Protection begins on the date that the "intent to use" application is filed (presuming, of course, that it is eventually approved).


• After filing, if all goes well, it will take the government about 4 months to approve the application and issue a "Notice of Allowance"


• In the Notice of Allowance the applicant is informed that he or she has 6 months from the date of the Notice of Allowance to submit a "Allegation of Use" (which is an on-line sworn statement that must have a specimen attached - see below for details).


• Protection for the trademark ceases if that deadline is not met (the time limit can be extended one time for an additional six months provided an additional fee is paid).


• ADDITIONAL FEE PAYABLE:  An additional fee must be paid for an "intent to use" application in the amount of $100 per class (above and beyond the regular filing fee).  This additional fee is payable upon filing of the "Allegation of Use".  If the applicant still needs more time he or she can request a six month extension of the deadline by paying an additional $150


• An "ALLEGATION OF USE" MUST BE FILED BEFORE THE DEADLINE:  Prior to expiration of the deadline stated in the Notice of Allowance an "Allegation of Use" must be filed (on-line).  At least one specimen must be attached.


• SPECIMENS:   CLICK HERE for a tutorial on how to create specimens