“Actual Use” vs. “Intent-to-Use” Trademarks

A trademark is a word, groups of words, or a symbol that is registered so that it can be used in association with a company or a product. Another individual or business can not utilize something that is trademarked. It is used more often by companies that want their customers or clients to know that a particular product or service is associated with their business.

There are two general ways to register a trademark. As the focus of such a mark is that it is used in association with a business, the word, phrase, or symbol must be actually used in commerce before it can qualify for registration.

However, this requirement poses a problem for businesses that do not want to spend time and money on getting a mark into commerce if it will not ultimately be eligible for registration. To address this problem, the Lanham Act, the federal law that addresses trademarks, was amended in 1988 to allow applications based on “intent-to-use” trademarks.

Choosing the Right Application

Whether you are applying for a trademark under either actual use or intent-to-use, you must fill out an application. The actual use application is known as a 1(a) application, and the intent-to-use is known as a 1(b) application. Both applications include the same information and require the same fee. However, the 1(a) application will also request information about when the trademark was first used.

You can file an intent-to-use application as long as you have a “bona fide” intent to use the mark in the very near future. While “bona fide” is not actually defined, it generally means that you must be able to present evidence of your good faith in filing that type of application.

The Application Process

Both applications go through an “examining attorney,” which the official title of the trademark examiners at the United States Patent and Trademark Office. Then, if approved, the mark will then be published in the Official Gazette for 30 days. Parties can file oppositions to the trademark during this period.

If the mark has no objection, it will continue through the application process. Actual use applications will head straight to registration after going through the publication process assuming no objection is made. However, intent-to-use applications require a few more steps.

First, the examining attorney will provide a Notice of Allowance to the applicant. The notice indicates that the mark has been approved; however, it still cannot be officially registered until it is actually used in commerce. The applicant must file a Statement of Use to prove that it is used in the market before it can be recorded. This statement is usually accompanied by a sample as well. Only after the Statement of Use is accepted can the trademark be officially registered.

Your unique business needs will dictate which type of application will work best for your company. Contact Integrated General Counsel for more information about trademark registration.

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Written by Integrated General Counsel

Our focus includes handling a variety of corporate matters and also includes litigation in state and federal courts. Our current practice includes providing transactional services and representing a variety of small and medium-sized companies as their outsourced general counsel.