Intent to Use Trademark Applications

An important concept within trademark law is the “intent to use” provision, specifically designated as 1(b) Intent to Use. This basis of use allows business owners to file an application for trademark registration before actually using the trademark. In this post, we will discuss the significance of 1(b) Intent to Use applications in trademark law.

Definition of 1(b) Intent to Use

Under Section 1(b) of the Lanham Act, also known as the Intent-to-Use provision, an applicant can file a trademark application with the USPTO based on a bona fide intention to use the mark in commerce in the future. This provision allows brand owners to secure priority rights for their trademarks before the marks are actually used in the marketplace.

Benefits of 1(b) Intent to Use Trademark Applications

The intent-to-use provision offers several advantages to brand owners.

1. Reservation of Priority: By filing an intent-to-use application, a brand owner can establish a priority date for their mark. This priority can be the determining factoring in the event of conflicting applications. This means that if another applicant attempts to register a similar mark after the filing date of the intent-to-use application, the applicant with the earlier filing date generally receives priority.
2. Flexibility in Development: Intent-to-use applications give brand owners the freedom to refine their product or service offerings, marketing plans, and branding strategies without the immediate pressure of using the mark in commerce. It allows them to secure legal protection early on, protecting their future commercial interests.
3. Strategic Positioning: Filing an intent-to-use application may deter competitors from adopting similar marks, as the applicant’s priority date becomes publicly available. This helps prevent brand confusion and potential infringement issues.

Bona Fide Intent

The applicant must have a genuine intention to use the mark in commerce in connection with specific goods or services. This intention should not be speculative or merely for the purpose of blocking others from using a similar mark. The applicant either directly or through their trademark attorney must attest to this bona fide intent in the application.

Conversion from Intent-to-Use to Actual Use

A 1(b) Intent to Use applicant still must eventually submit a Statement of Use (SOU) before the trademark is registered. The SOU must include evidence of actual use. Extensions for filing the SOU may be available under certain circumstances. Upon approval, the mark will be registered and granted full protection.

The 1(b) Intent to Use provision in trademark law allows brand owners to secure priority rights and protect their marks before they are used in commerce. It offers flexibility, strategic advantages, and the ability to establish a priority date, even during the development stage. Contact Alex to discuss the post or to get started on preparing your trademark application.