The Risk of 'Intent to Use Applications' in Trademark Law
Trademark owners who apply for “intent-to-use (ITU) applications” are at risk of losing trademark rights if the identification of goods and services with the intent to use application are broader than the actual intended use of the trademark. A recent case emphasized that applying for a larger application than is actually used is not always a wise idea.
This case, Kelly Services v. Creative Harbor, emphasized that potential plans for use of a trademark will be excluded from registration when challenged. Instead, the application must be able to demonstrate that more than an intention to reserve a right in the trademark exists. In “ITU” applications for a trademark like in this case, individuals often require the assistance of particularly skilled legal counsel.
Trademark applications can be filed under several types of basis, but the two most common filing bases are having a bona fide intent to use a trademark as well as actual use of a trademark in the course of interstate commerce.
The Filing of ITU Applications
Intent to use applications must be filed by a party entitled to use the mark in commerce on the application filing date and the application must include a verified statement that applicant has a bona fide intention to use the mark commerce. It is important for applicants to understand that they cannot claim ownership of a trademark merely because an intent to use application is filed.
Instead, the trademark must actually be used in commerce. Applicants often do not realize that intent to use applications merely allow an individual or company to reserve rights to a trademark before it begins to be used as a mark. As a result of these requirements, an applicant cannot file an application merely because it has an idea for a trademark or because an applicant believes that a trademark would make a good name.
The Advantage of ITU Applications
Often once clients learn about the limited purpose of ITU applications, they ask what the benefits of these applications are. One advantage of intent to use applications is that these applications allow the Trademark Office to review an application before the applicant has invested significant money in packaging, marketing, and other items involved with the mark.
Also, individuals who file ITU applications are not required to provide evidence of the use of the mark in commerce part of the application. If the Trademark Office does grant an ITU application, an individual has up to 30 months to use the mark in commerce.
Another advantage of intent to use applications is that filing dates will serve as the date of an individual’s first use of the trademark provided that the individual later uses the trademark and follows other applicable federal regulations. Having this early filing date considered the first use of the mark can prove extremely advantageous in the event that conflicts arise with other rival trademarks.
How a Knowledgeable Trademark Lawyer Can Help
For individuals who require the assistance of a skilled trademark attorney, the practice of Whitcomb, Selinsky, McAuliffe, PC has helped many individuals. Our firm can be reached by calling our Denver office at (303) 534-1958 or filling out our online form.