Should I File an In-Use Trademark Registration Application or an Intent-to-Use Application?

in use or intent to use trademark registration application
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Detroit Michigan Trademark Attorney: In-Use vs. Intent-to-Use Trademark Applications: What’s the Difference?

The basic difference between these two types of applications for trademark registration with the US Patent and Trademark Office (USPTO) is logical: an in-use application is appropriate for a product or service that is already “in-use”  (sold) in interstate commerce. An intent-to-use application is an application for prospective registration, prior to the produce or service’s use in interstate commerce. 

An intent-to-use application will be finalized by the USPTO only when the product or service is finally “in use” and a Statement of Use is filed. 

The different categorizations exist because the purpose of trademark registration is not to give you, the purveyor of goods or services, an intellectual property ownership interest in your business or product name or logo but, rather, to protect consumers who might purchase that product or good. 

A registered trademark is a consumer’s guarantee of the source and quality of something they are buying, in other words. 

In order for this to work, the product or service must actually be available for consumption. It must be … in use

Detroit Michigan Trademark Attorneys: Why File an Intent-to-Use Application? 

If the Trademark will not be registered until the product is in use in commerce anyway, why file an intent-to-use application? 

The filing of an intent-to-use application allows you to obtain an earlier filing date than possible competitors for registration of your mark. 

The US is a “first to use” jurisdiction, which means that the applicant who has first used a proposed mark (earlier in time) has the right to register it. 

If there are two possible applicants for use of a mark, however, the applicant that has filed its registration application earlier has priority over another that may conflict. 

That applicant will have an advantage if a dispute develops. 

Detroit Michigan Trademark Attorneys: In-Use vs. Intent-to-Use – The Bottom Line

An intent-to-use application has advantages. However, you must have a good faith, bona fide intention to use the mark in commerce in the foreseeable future. After filing an intent-to-use application, you will be required to file a Statement of Use within a fixed time-frame. Although this deadline can be extended, the number of extensions available are limited. 

If you have no idea when you will launch your product or service commercially, you should consult a trademark registration attorney to discussing filing types and filing-timing. 

The Hilla Law Firm, PLLC offers free virtual consultations or virtually to Michigan clients throughout the United States. 

If you are interested in discussing the filing of an initial trademark application or defending an office action already filed, please contact us to discuss your matter or click the “Register Your Trademark” Button to the right of this page.

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