Applications for United States Trademark Registration Based on an “Intent-to-Use” Under Section 1(b) of the Trademark Act

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Applications for United States Trademark Registration Based on an “Intent-to-Use” Under Section 1(b) of the Trademark Act

Unlike some countries and unlike states such as Florida, the United States Patent and Trademark Office (“USPTO”) permits the filing of an application to register a trademark or service mark prior to any actual use of the mark in the United States by the applicant.  Such applications are filed under Section 1(b) of the Trademark Act.  Furthermore, the filing of such an application gives the applicant the benefit of obtaining a priority of rights date that precedes the applicant’s date of actual use of the mark in United States interstate commerce.  In layman’s terms, the “Intent-to-Use” application can be used to reserve rights to a mark that you are planning to use in the future, before you even use it. To file, we will need the following:

  • • The mark, exactly how you intend to use it;***
  • • Full legal name of the applicant;
  • • Address of the applicant;
  • • Initial filing fee; and
  • • Concise and complete description of all goods and services with which you plan to use the mark and for which you seek protection.

We will do the rest. Once the USPTO issues a Notice of Allowance, we will have six (6) months to file a Statement of Use, which is a declaration by a trademark applicant that the mark is currently being used in United States interstate commerce, supported by a specimen (i.e., example) of use in interstate commerce with a statement under penalty of perjury as to the date of first use of the mark in such commerce. A fee will also be required, which includes the governmental filing fee associated with this filing.  Santucci Priore, P.L. does not collect the fee for filing the Statement of Use at the time of filing the application as some law firms do.  Often the Statement of Use is not filed until a year or more after the initial filing of the application.  We believe you should hold on to your money until then.

Should your mark not be used in commerce by the due date to file a Statement of Use, we can file various requests for six-month extensions of time to file the Statement of Use and specimen. Such requests will also require additional fees, which include USPTO filing fees associated with each request filing. Please note that a request for a six-month extension can be filed every six months, for up to three years. For more information about Intent-to-Use Applications under section 1(b) of the federal Lanham Act, see the section of our website that discusses “Federal Registrations.”

If you are interested in filing a trademark application in the United States or abroad, please CONTACT US, or fill out this short questionnaire on our website:  Federal Trademark Registration  The questionnaire is designed to elicit all of the information we will need to provide you with an exact flat fee, and to prepare and file an application on your behalf.  That way, we will be ready to file as soon as possible.

***If your mark is a logo, then please provide a hi-resolution image in .jpg format.  If there is no logo, then just type the work(s)/letter(s) comprising the mark as you intent to use it.  Include hyphens, punctuation, spacing, etc.  The USPTO does not permit material alternations to the mark once the initial application is filed.

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