General Information
A federal trademark may be reserved through the filing of an Intent to Use application. The Intent to Use application is similar to the standard federal trademark application but allows the applicant to delay using the mark on the relevant goods or services. Final registration will be allowed only upon making actual use and filing of an Allegation of Use with the USPTO. An Allegation of Use is a sworn statement attesting to use of the mark in commerce. USPTO Glossary. An Allegation of Use may be filed either prior to the date the application is approved for publication or within 6 months after the Notice of Allowance is issued, unless a request for an extension of time is granted.
Purpose/Necessity
An Intent to Use application is the only option for mark holders who wish to obtain rights in their mark immediately, but who have not yet used the mark in commerce. The USPTO must consider marks previously filed under Intent to Use applications when determining whether a later filed mark presents a “likelihood of confusion” and should therefore be refused.
The Intent to Use application option presents a tradeoff: the applicant is given the benefit of reservation prior to making actual use of the mark in exchange for having to complete an additional step before registration may be obtained. When the Allegation of Use is ultimately filed, an otherwise registrable mark will receive the same rights available to a mark initially filed based on existing use in commerce.
Frequently Asked Questions
- Isn’t it easier to place the mark “in use” and file a standard federal trademark registration application?
- Probably so. Before the mark may register, the applicant will have to use the mark in commerce and file an Allegation of Use which provides an oath that the mark has been placed in use. Some applicants forget this step, causing the mark to become “abandoned.” The mark holder would then have to file a new application and fee to register the mark.Because of the additional filing requirements, accompanying legal fees, and USPTO filing fees, it is usually better to place a mark in commerce before filing for a federal trademark registration. However, for those mark holders who wish to secure rights immediately, the Intent to Use option may be preferred.
- Does a mark filed under an Intent to Use application receive the same rights available to a mark filed under a regular (Use in Commerce) registration?
- Yes. Shortly after filing, the mark submitted under an Intent to Use application will appear in the federal trademark search, which will put the public on notice to the rights claimed by the Intent to Use applicant. And regardless of the method of application, the mark will undergo the same USPTO screening process. Thus the USPTO will consider marks previously filed under Intent to Use applications when determining whether to grant registration to later filed marks.An Intent to Use applicant will have to complete an additional Allegation of Use filing that a regular applicant need not submit. Assuming this is done, the rights granted when the trademark is ultimately issued are identical.
- What are the types of Allegation of Use that may be filed?
- There are actually two different filings that may be made to allege current use: an Amendment to Allege Use and a Statement of Use. Both contain the same information and differ only as to the time when filed. The Amendment to Allege Use may filed early in the USPTO’s reviewing process (before the examining attorney approves the mark for publication in the trademark Official Gazette). If this deadline is missed, a Statement of Use must be filed instead. The Statement of Use may be filed after the Notice of Allowance has been issued.If you use our firm to complete this legal service, we will determine where the USPTO is in the trademark review process and, given that status, make the appropriate filing. You will not have to concern yourself as to which filing to make or by when it may be submitted.
- What is a Notice of Allowance?
- A Notice of Allowance is a written notification from the USPTO that a mark filed under an Intent to Use application has survived the opposition period following publication in the Official Gazette and has been allowed for registration. USPTO Glossary. A Notice of Allowance indicates that the mark will be registered upon sufficient proof of actual use, as demonstrated by the filing of an Allegation of Use (in this case, a Statement of Use).The Notice of Allowance establishes the due date for filing a Statement of Use. If a Statement of Use or an Extension Request is not filed within 6 months of the Notice of Allowance, the application will be abandoned. If an application is abandoned, the mark holder will have to file a new application and fee to register the mark.
- What is the purpose of an Extension Request?
- An Extension Request is only relevant to an applicant who previously filed an Intent to Use application and received a Notice of Allowance. If the applicant has not placed the mark in use and therefore cannot file an Allegation of Use (in this case, a Statement of Use) within 6 months of the Notice of Allowance date, an Extension Request will prevent the application from being abandoned.The Extension Request will provide an additional 6 months to either file the Allegation of Use or file another Extension Request. The extension will be granted from the date the application would have otherwise been abandoned, rather than the filing date of the Extension Request. The USPTO will allow up to five 6-month Extension Requests, meaning the Allegation of Use must be filed no later than 3 years after the Notice of Allowance is issued.
Legal Services Offered and Cost
Federal Trademark Intent to Use Application
Legal fees: $300 flat fee
This includes:
- Review of client’s information to confirm ownership, intent to use, and ability of mark to function as a trademark
- Comprehensive federal, state, and common law trademark search to determine whether mark is distinguishable from existing marks or if a likelihood of confusion exists
- Email client results of search and offer legal opinion as to whether trademark intent to use registration is recommended
- Answer client questions, make corrections, and obtain additional information as needed
- Completion and filing of federal trademark intent to use application and appropriate filing fees with the USPTO
- Tracking of the trademark intent to use application and keeping client informed regarding its status
- Responding to questions and routine Office Actions from the trademark office
- Email confirmation of availability for registration and mailing of Notice of Allowance upon receipt from the USPTO
If you are ready to get started, please CLICK HERE to enter basic information using our secure online form.
Federal Trademark Allegation of Use
Legal fees: $300 flat fee
This includes:
- Review of client’s information to ensure legal requirements are fulfilled
- Answer client questions, make corrections, and obtain additional information as needed
- Completion of Allegation of Use form
- Submission of allegation and filing fee with the USPTO
- Email confirmation of Allegation of Use filing with trademark Certificate of Registration upon issuance
If you are ready to get started, please CLICK HERE to enter basic information using our secure online form.
Federal Trademark Intent to Use Extension Request
Please note, this service is only necessary for an applicant that has previously filed an Intent to Use application, received a Notice of Allowance, and cannot file an Allegation of Use within 6 months of the Notice of Allowance issuance date.
Legal fees: $150 flat fee
This includes:
- Review of client’s information to ensure legal requirements are fulfilled
- Answer client questions, make corrections, and obtain additional information as needed
- Completion of Extension Request form
- Submission of request and filing fee with the USPTO
- Email confirmation of the granting of an additional 6 months to file an Allegation of Use
If you are ready to get started, please CLICK HERE to enter basic information using our secure online form.