Intent to Use vs. Use in Commerce: Consideration of Different Federal Trademark Application Filing Options

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When entrepreneurs, technology startups and innovation departments in large companies come up with a brand name and decide to file a trademark application in the United States Patent And Trademark Office (USPTO), consideration of the type of application to file becomes an important question. 

There are two types of Trademark Application forms available in the USPTO: 

  • Section 1(a) “Use-in-Commerce” Application, or
  • Section 1(b) “Intent-to-Use” Application 

When to File a Section 1(a) “Use-in-Commerce” Application 

Use in Commerce Applications are typically appropriate for trademark applicants who are, at the time of filing, using the trademark, brand name, logo, or slogan, in United States commerce and across state lines, in connection with the goods and services identified in the application. In other words, the owner should be in business under the mark for which the federal trademark application is considered in the USPTO. 

When to File a Section 1(b) “Intent-to-Use” Application 

On the other hand, entrepreneurs, technology startups and brand owners who have yet to enter the marketplace, and cross states lines in the United States, may benefit substantially from filing an Intent to Use Application which provides instant nationwide priority rights as of the filing date, despite not being in market, which is requirement to obtain trademark rights, and one that should ultimately be met in every Intent to Use application under Section 1(b) for the application to mature to registration. 

The type of federal trademark application to file in the United States Patent and Trademark Office (USPTO) and meeting application requirements to correctly pass through the trademark registration process in the USPTO, are critical considerations that every brand owner comes across throughout the trademark selection and adoption process, including federal trademark protection in the United States Patent and Trademark Office. Consultation with an experienced trademark attorney can help entrepreneurs, startups, and brand owners, among other investors and innovators, consider questions relating to whether the mark is in use in commerce at the time of filing of the application, whether there are advantages to filing an Intent to Use federal trademark application in the USPTO, and who is the formal trademark owner in the event of multiplies or persons involved in brand name creation. 

As cliche as it may be, can a rose by any other name smell as sweet? Since Shakespeare did not have the privilege of filing a federal trademark application in the United States Patent and Trademark Office, he will never know.

David N. Sharifi, Esq.
David N. Sharifi, Esq.

David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal.
Office: Ph: 310-751-0181; david@latml.com.

Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2019. All rights reserved.

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