What is an “intent to use” application and when would I need it?
What? Is that a thing?
Can I just pop up an idea for a trademark and run to the USPTO to register it?
Well, yes and no. If you have an idea of a trademark in mind and you are really thinking about starting to use it, keep reading because we have the right path for you to take.
The typical path: Application 1(a)
We normally use this 1(a) “in use” application basis when our clients reach out to Indie Law for help to submit their trademark applications. In this application, you’re claiming that you already use the trademark in commerce.
Providing evidence of actual trademark use (which is called a “specimen” in the world of trademarks) at the beginning of the registration is the key difference to the other option you can take with your trademark registration.
Keep in mind that over the years, the trademark office has been quite picky with the specimens they accept. There are several factors to weigh in on the type of specimen you’ll need to submit, if you want to make sure you submit the right specimens,
The other path: Application 1(b)
A 1(b) application is also called an “intent to use” trademark application. We use this application when a business has not yet started using this trademark in commerce.
For example, if you tell us that you are in the final phase of developing your product and building the brand but the website is not live yet, then we may recommend filing a 1(b) application.
In this case, you don’t yet have evidence, or specimens, because you aren’t yet actively using your trademark in commerce.
In this case, by selecting the 1(b) option on the trademark application form, we skip the requirement of having to provide a specimen on the initial application.
But wait a minute. While we skip the specimens part at the beginning of your registration, remember that applying to register your trademark is divided into 3 steps, check out this blog so you can check how the typical process goes.
Ok, back to the process!
Months after you submit your application, the United States Patent and Trademark Office (USPTO) will place your application in a 30-day opposition period. During this time, another business or individual can file an opposition challenging your application. .
If no one oppose your registration during this 30 days, then the USPTO will send you a Notice of Allowance (NOA) that it will basically say:
“Congratulations! No one opposed your registration. Wow we need a Statement Of Use from you.”
A Statement of Use, or SOU for short, is the way for the trademark office to now see the evidence that you are actually using the trademark in commerce. Since you skipped the specimen step at the beginning of the 1(b) application, it is now time to provide that specimen.