Question:

What are the differences between “intent to use” and “use in commerce” trademark applications?

Answer:

Use in commerce applications are beneficial when your trademark is currently being used in a commercial context, which sounds obvious. For example, when you sell a product with your trademark on it, the trademark is used in commerce. When you file for trademark protection with the United States Patent and Trademark Office (USPTO) under a use in commerce application, you are required to submit photos or images of the trademark being used in commerce at the time you are claiming you were using the trademark in commerce.

After that, you can expect an examining attorney to look at your application within three months and either approve your application, ask for additional information, or reject your application (which hopefully won’t happen if you conducted a trademark search prior to filing your application). Assuming all goes well, your trademark will be published for opposition for 30 days, and will then register without issue. Overall, you’re generally looking at a four to six month process for the use in commerce application.

With the intent to use application, you’re filing for trademark protection for, you guessed it, a trademark you intend to use in commerce at some point in the future. There are some big differences between this and the use in commerce application. Specifically, you’re not required to file images or photos of the trademark being used in commerce when you file the application, which makes sense since you intend to use it in the future. Once you file, an examining attorney will review the application after about three months, and either approve it, ask for more information, or reject it. After that, the USPTO will publish the trademark for opposition for thirty days, at which point you have six months to submit photos or images of the trademark being used in commerce. If the images are acceptable, the application will move on to registration from there.

Another big difference between a use in commerce and an intent to use trademark application is that there is an additional filing fee for the intent to use application when you file those images at a later date. Typically the additional filing fee is $125 per class in which you’re filing.

Lastly, with the intent to use application you could find yourself in a situation where you’re, for whatever reason, unable to file images or photos showing the trademark’s use in commerce within the six month deadline. Fortunately, you can file for up to five six month extensions to upload those images, so you can have quite some time to get that part of the process done. However, those extensions also come with additional filing fees, so the process can get expensive.

So what are the benefits of the intent to use application?

We’re glad you asked! The intent to use application gives you a priority date for your trademark from the time you file the application. If you’re concerned your trademark might get filed by someone else before you can meet the requirements for the use in commerce application, filing an intent to use application gives you priority from the date you filed your application. Essentially that means you’re in first. While it can be a bit more expensive, the benefits of holding priority from that early date can definitely be worth it.