In this ‘Intellectual Property Application Series,’ I’ll be discussing use based trademark applications compared to intent to use based trademark applications for U.S. federal registration. I’ll explain what a use based trademark application is, what an intent to use based trademark application is, what to know about them before filing any trademark application, and why trademarks are an important tool for protecting your product or service.
What a Trademark is:
A trademark is a type of intellectual property that distinguishes and identifies the source of a good and/or service. Trademarks also assert one’s right to use a specific word, phrase, logo/symbol, design or a combination thereof in the market. In short, companies use trademarks to distinguish one’s products/services from another.
The word “trademark” is generally used as an umbrella term to include both trademarks and service marks. More specifically, trademarks protect those marks that indicate the source of a good, rather than the source of a service. Both types of marks can be applied for by filing a use based or intent to use based federal trademark application. The term “trademark” will be used in the general sense in this blog to indicate both trademarks and services marks, unless specifically indicated.
U.S. federal trademark registrations are identified by class numbers and descriptions. Trademark classes are a categorization of all the potential goods/services that can be claimed in a trademark and service mark. The class descriptions include 34 goods categories and 11 services categories, making a total of 45 different classes. Identifying trademarks by class helps to distinguish confusingly similar marks that are used to provide different classes of goods/services, among other things.
What a Use-In-Commerce Based Trademark Application is:
A use in commerce based trademark application is filed if the trademark and all of its identifying classes are in current use to market the selected goods/services. Current use of a mark in commerce is shown by providing the USPTO with the date the mark was first used anywhere as well as the date the mark was first used in commerce. This type of filing also requires submitting specimen(s) for each of the mark’s classes that prove how it is currently being used to market the goods/services associated with it. If the mark has not been used in commerce, an intent to use (ITU) based application can be filed without initially filing a specimen.
What an Intent-to-Use Based Trademark Application is:
The intent to use based application is filed if a trademark has not yet been used in commerce, but the applicant has a true intention to do so in the near future. This is the case if a potential trademark and its use has been decided on, but the goods/services associated with it are not market ready and the business needs more time to establish use. An intent to use base application will secure the filing date and will create a public record of the mark. This would give your mark priority over a potential competitor if a legal dispute should arise. The process for registering an intent to use based trademark application requires additional fees and forms to be filed than its use-based counterpart.
More About Trademarks and Use:
According to the Lanham Act, which governs trademark law in the U.S., from the moment a mark is used by a business in commerce, it is automatically protected as a common law mark. The first individual to use a mark in commerce is awarded the Common law rights to the mark. This obviously means that rights to a Common Law trademark do not require an official federal or state trademark registration. Common law rights, however, just as federal trademark rights to a trademark, only exist when a mark is in use. Federal registration provides a public record of the trademark and its use, among other things.
Protection of a mark using common law rights only extends to the geographic area in which the mark is used. This limitation could prevent expansion into other geographic areas. A company in a different geographical area that uses a confusingly similar mark would limit that market. Common law rights may preserve one’s rights to a mark, even over a federally registered trademark, but proving the date of first use may be difficult. Contrastingly, federal registration of a mark provides a verifiable public record of the date the mark was first used in commerce and a copy of the official specimen proving its use.
If an owner of a Common law mark believes that another mark infringes upon their own mark, an application for federal registration, preferably on the United States Patent and Trademark Office (USPTO) principal register, should be filed before an infringement suit is filed. This is because registered trademark holders have the right to recover profits, sue for statutory damages, cover legal costs, and receive triple damages for willful infringement. To federally register a trademark, an applicant must be ready to submit an official specimen proving that the mark is currently in use.
What to Know About Trademarks Before Filing:
One of the first steps before filing either a use based or intent to use based trademark application is to investigate the potential mark and confirm if it is unique. For this, a person performs a search of currently used marks. An individual can attempt a search, but a patent attorney, patent agent, or a person who specializes solely in these types of searches can conduct a formal and more thorough search.
To conduct a formal search, an experienced professional uses specialized tools and databases to compare the potential trademark to the millions of published and registered trademark applications and their specimen. You can find these applications in the database of the Trademark Electronic Search System (TESS) of the USPTO and in the state specific Secretary of State Office databases. A thorough search would also include a search of common law marks. Even though common law marks, as a matter of course, are not compiled in a useful list, an in depth internet search should provide a good opportunity to determine if a mark is already in use. Afterall, a standard for the protection of a trademark is that the mark must be in use.
Helpful Paralegal’s Note: Even the most in depth search may still miss a similar mark, but finding out if a mark is already registered could save a company from being sued for accidentally infringing another’s mark. This could not only save time and money, but also a company’s reputation.
Once a mark is decided on, there are specific requirements that must be met for a trademark application filing to be accepted, and for the mark itself to qualify for federal protection. The USPTO defines the trademark application filing requirements. To qualify for federal protection via registration with the USPTO, a potential registered mark must be unique to the individual business that is applying for its use.
The trademark must also either be in current use in commerce (use-in-commerce based application) or its owner must intend to use the mark (intent-to-use based application) in the near future. Whether or not a mark is used in commerce dictates what type of application can be filed with the USPTO and whether or not a specimen is required at the time of filing. To begin the trademark application filing process one must select a proper filing basis based on whether or not a proper specimen exists.
A trademark specimen is an integral part of a registered federal trademark, whether it was initially filed as either an intent to use based or use based application. Specifically, a trademark specimen is an example of and proof of a potential trademark’s current use in commerce. As such, a specimen represents what a potential consumer would recognize when deciding to buy a company’s goods/services.
A specimen is also a representation of a trademark applicant’s legal proof of how a trademark is used. This indication of use proves an owner’s right to use that specific trademark in connection with their specific goods/services identified in the trademark application. As such, the rules governing trademark specimen are strict and must be adhered to in order to receive a federal or state registered trademark.
The USPTO states that a specimen must show a trademark where and how consumers expect to see it in your industry. The following is a list of the USPTO requirements for an acceptable specimen:
- Show your trademark used with the goods or services listed in your application.
- Depict your trademark as shown on the drawing.
- Show your trademark in actual use in commerce (not a “mock up” or printer’s proof of how it might be used in the future, or a digitally altered image that is not actually in use).
- Show your use of your trademark (not use by someone else, such as press releases sent exclusively to news media).
- Be an appropriate type of specimen based on whether you have goods or services. For example, advertising material is an acceptable specimen for services, but not for goods.
- Show that your trademark is used in a way that consumers would perceive it as a source indicator for the goods or services in your application (it functions as a trademark).
Examples of acceptable specimen differ based on whether the application is for a trademark representing goods being sold or a service mark representing services being offered. For trademarks offering goods, acceptable specimen would include a photos of the goods themselves, of labels/tags affixed to the goods, of the packaging of the goods, of the sales display signs/placards where the goods are sold, webpages selling the goods, or screenshots of the goods if it software. For service marks offering services, acceptable specimen would include online advertising/printed matter, television/radio commercial, invoices, business cards/letterhead, marketing materials, signage where services are rendered, materials used in the sale of services, materials used in the providing/rendering of services. It is imperative that the specimen shows a direct link between a trademark and the services being offered.
If these requirements are not met, the specimen will be rejected and a response with an appropriate specimen will need to be filed in order for the trademark to be registered. This can be a tricky part of the trademark application process that may require the assistance of an experienced intellectual property attorney. The USPTO has some advice about hiring a private trademark attorney.
Specimen Requirement in Intent-to-Use Based Applications:
A specimen is not an initial requirement to file an ITU application. An applicant has the option to file an appropriate specimen before a trademark application is approved for publication or after it has been published. The required forms and fees differ depending on where or not the application has been published. A specimen will eventually be required in order for that trademark to be federally registered. The process for filing an appropriate specimen to achieve registration is discussed in more detail later in this blog.
Helpful Paralegal’s Note: A specimen is not required to be submitted with a U.S. federal trademark application if it is based on a foreign application or registration, or filed under the Madrid Protocol. In these cases, a specimen may have already been filed with the foreign office. Use of the trademark must still be proved.
What to Know About the Trademark Prosecution Process:
After either an intent to use based or use based trademark application is filed with the USPTO, a trademark Examiner will review the mark for adherence to the filing regulations. The mark must be distinctive and if in a use based application, an appropriate specimen must be submitted showing the mark being used in commerce. To see if the mark is distinctive, an Examiner will compare the potential mark to the other marks both published (pre-registered) and registered on the state or USPTO databases. This will include a review of the class descriptions, supported by the specimen(s) on file.
For both use based and intent to use based federal applications, if a similar mark is not found, the application will be published in the USPTO Official Gazette. This publication will include all the trademark filing information. This would include a representation of the as-filed specimen for use based applications. Publication on the Official Gazette begins a thirty-day Opposition Period. During this time, a third party may contest registration of the mark. To contest registration, an opposition to the mark can be filed with the Trademark Trial and Appeal Board (TTAB). If no opposition is filed, the use based mark is allowed for registration on the Principal Register of the USPTO. For intent to use based applications, a Notice of Allowance is issued after publication.
There is an alternative to receiving a Notice of Allowance in an intent to use based application. After filing the ITU application, but before the application is published, an Amendment to Allege Use, with the appropriate fee can be filed. This would be the best course of action if shortly after filing the ITU application, the mark is used in commerce and a specimen proving this use can be supplied.
If an Amendment to Allege Use is not filed before the trademark application is published, the USPTO will issue a Notice of Allowance (NOA). The NOA begins a deadline to file a Statement of Use (SOU). A complete SOU would include the dates of first use and an appropriate specimen showing current use of the mark in commerce. The initial deadline to respond with the SOU is within six-months of USPTO issuing the NOA. This deadline is extendable up to three years, with the appropriate fee. If a specimen showing use can not be supplied by the final deadline, the application will expire and rights may be lost. The USPTO has issued a helpful timeline for ITU applications that can be accessed here.
In some instances, a federal intent to use application is filed identifying multiple classes, but not all classes are in use by the initial Notice of Allowance deadline. An option for addressing this is to divide the trademark application into additional trademark applications. After dividing the application, specimen(s) showing the currently used classes can be filed in response to the Notice of Allowance. If accepted, a Registration Certificate may be issued for those specific classes proven to be in use with a specimen. As for the classes that are not yet in use, the deadline initiated by the NOA would stand.
Federal trademark registration grants a mark protection under U.S. federal trademark law. The USPTO will add the registered mark to its’ list of registered applications, which include an image of the specimen showing use. Individual and professional searching authorities can use this official list of registered marks to search for a compare potential marks to currently protected marks.
Post Registration Information and Warning:
Federal registration allows for protection under federal laws and for the owner of the mark to use the registration symbol (®) to indicate this protection. This symbol gives constructive notice to the public that the mark is in use. It also discourages others from unintentionally infringing the mark. If infringement is found, the registrant has the right to bring suit in federal court.
Other protections are provided by the USPTO after trademark registration. The office will not accept a competing application for any mark similar to one already registered. Additionally, a U.S. federal registration can be used as a basis to obtain registration in foreign countries or via the Madrid Protocol.
A registered trademark must be maintained to keep it enforced. This rule prevents trademarks from being excluded from registration without the adverse mark actually being in current use. To maintain a U.S. trademark registration, you must continue to use the mark in connection with the goods/services identified in the registration, and occasionally file certain documents in the USPTO. One of the main requirements is to submit a specimen proving that the mark is currently in use. The time frame for trademark renewal is five years after registration, then every nine to ten years thereafter.
Between five and six years after registration, a Declaration of Continued Use (or Excusable Non-Use) must be filed. This is also called an Affidavit of Continuing Use, or a Section 8 Affidavit, since its requirements appear in section 8 of the Trademark Act codified at 15 U.S.C. § 1058. The affidavit also requires a specimen of the mark as used in commerce and a fee for each class of goods. By every tenth anniversary thereafter, a Declaration of Continued Use and an Application for Renewal must be filed. The Application for Renewal, governed by section 9 of the Trademark Act (15 U.S.C. § 1059) also requires a fee for each class of goods covered by the registration.
After a trademark is in use and/or registered, the market must be monitored for infringement. The trademark owner is expected to enforce their ownership or risk losing rights to the mark. If infringement is suspected, a notice of the trademark rights should be sent to the infringer with the request to cease and desist. This cease and desist notice should, at a minimum, advise the infringer to stop the infringement, or expect further action. While it is not required, having an experienced legal team behind a cease and desist notice can help avoid the potential for the tables to turn. A simple cease and desist notice can be justification for a defamation complaint, claim of extortion, or even material for a counter suit.
The trademark owner is responsible for monitoring and enforcing their rights, but third parties can be enlisted to assist. To ensure that a mark is being monitored correctly, we can assist in forming these trusted relationships and maintaining communication. Additionally, if infringement is found, our team is here to help guide you through the task of trademark enforcement.
A trademark owner should be wary of solicitations from private companies requesting payments to maintain a trademark. Some of these companies simply want to charge for attending to the trademark maintenance fee. Unlike a licensed attorney, these companies are under no obligation to continue to monitor a trademark after the initial maintenance fee is paid. It should also be noted that there are intentionally misleading or malicious entities that send solicitation letters to trademark owners. These entities request payment without the intent of actually maintaining a trademark. In this case, if maintenance fees are not paid, the rights to a trademark will be lost, while the trademark owner believes their rights are still protected. To help identify trademark solicitors, the USPTO has included a list of potentially misleading notices.
Why a Trademark is an Important Tool:
Trademarks are important in their ability to protect both consumers and the businesses that serve them. They provide a business with a way to protect their identity and the goodwill associated with their goods/services. The option to file either an intent to use based or use based trademark application gives businesses the opportunity to protect their mark earlyon in the marketing process.
The rules that govern trademarks also help businesses compete fairly. To protect against monopolization, the USPTO does not issue trademarks that claim generic terms that are used across an industry. This is another important reason why filing a trademark without an experienced legal team could be fraught with wasted time and money.
Trademark laws also help protect consumers from deceit by counterfeit products or fraudulent companies. Trademarks do this by signifying the goodwill and identity of a company. The goodwill of a company indicates to a consumer a level of quality or trust. If a business can’t protect that reputation, it could be the consumer that pays the greater price. A strong trademark backed by a strong legal team gives an owner the confidence to use a mark to identify their goods or services. Consumers then have the opportunity to build trust in that mark and in that company.
Don’t leave a matter as important as your intellectual property to chance. Willing help in the form of an experienced legal team is here and is just a call away. Thrive IP(R) patent attorneys are located in Charleston, SC; Greenville, SC; Knoxville, TN; and Alexandria, VA. Please contact us if you have an interest in filing a trademark application or to discuss other intellectual property matters.