Registering a trademark can be a complicated process, whether your business has done it many times, or whether you have never dealt with IP law before. One of the first decisions an applicant has to make before they register their trademark is whether they are going to file on a “use in commerce” basis vs. an “intent to use” basis. At War IP Law, we work tirelessly with our clients to ensure they are taking the right steps to protect their IP and avoiding costly mistakes. Trust our team to help you with all of your intellectual property matters. Call us or contact us online to set up a consultation with an experienced trademark attorney. 

What Does a Trademark Protect?

A common misconception is that when a trademark is registered, the trademark owner has absolute authority over that trademark, regardless of the use. A trademark is usually a mark, design, or phrase associated with a business’s sale of goods or services. Just about every major company has a trademark over its logo, and it is a critical part of maintaining your brand. However, registering for a trademark does not mean that the business owns the word, phrase, or shape without limitation. In fact, enforcement of trademarks is generally limited to the particular goods and services for which it is registered.

For example, a company that wants to sell coffee almost certainly cannot go by the name of Starbucks or use the classic green nautical siren logo on their cups. However, the fact that Starbucks owns that trademark does not necessarily preclude a boat manufacturer, for example, from using the name Starbucks. The reason for this is that it is highly unlikely that Starbucks has registered its trademark for the use of manufacturing or selling boats because it primarily deals in selling coffee. It is also highly unlikely that a seller of coffee would also be a boat manufacturer.

Two Most Common Types of Trademark Applications

Typically, a trademark application is either based on “use in commerce” or “intent to use.” It is important to understand which of these you are applying for before you submit your application.

Actual Use

“Use in commerce” applies when the applicant actually uses the trademark in the ordinary course of trade prior to the filing of the trademark application. According to Section 901 of the Trademark Manual Examining Procedure, a mark is “in commerce” when it either:

  • Is placed in any manner on goods, containers, tags, or labels (or if that is not possible, then placed on documents associated with the sale of the goods), as long as the goods are sold or transported in commerce, or
  • Is used or displayed in the sale or advertising of services rendered in commerce

The main takeaways about “use in commerce” are, first, that the applicant must be actually using the trademark when selling their goods or services – in other words, the intention merely to reserve the mark without actually using it is not sufficient. Second, the applicant must be “in commerce,” which generally means the trade must be interstate or international for purposes of federal law. Finally, this basis means that the applicant is already using the mark in commerce as of the filing date of the trademark application.

Intent to Use

On the other hand, an applicant can file a trademark application before they actually begin using the trademark, as long as they have a “bona fide intent” to use the mark in commerce. In order to file an application on an “intent-to-use” basis, the applicant has to submit a verified statement that they have a bona fide intention to use the mark, and that they have an entitlement to exercise legitimate control over the use of the mark in commerce. This must be submitted either with the original application, or if submitted after the original filing, the verification must specifically state that as of the filing date, the applicant had the intent to use the mark.

Note that while an applicant can apply for a trademark based on their bona fide intention to use the mark, the registration will not be granted until the applicant files an acceptable allegation of use. According to Section 1103 of the Trademark Manual of Examining Procedure, the allegation has to include the verified first dates of use and a “specimen of use” for each class. A specimen is basically an example of how your business is using the trademark in commerce or in connection with the goods or services.

Which Type Is Right for Your Business?

The advantages to filing an intent-to-use trademark application vs. a use in commerce application are fairly straightforward. If your business has not actually begun using the trademark yet, but you still want to get ahead of the game and file an application to register it, then an intent-to-use application is probably right for you. An intent-to-use application allows you to “reserve” the mark with your proposed goods or services. However, it is important to note that intent-to-use applications are slightly more expensive, and they will not be effective until you actually begin using your mark. If you decide to file a trademark application based on your intent to use the mark in the future, make sure to follow all of the necessary procedures to get your trademark properly registered after you begin to use it in commerce.

Form a Plan with an Experienced IP Attorney

War IP Law is a seasoned intellectual property law firm based in Washington, DC. We have handled a wide array of IP matters, and we know the ins and outs of trademark law. Whether you are a large corporation or a small start-up registering a trademark for the first time, we can help ensure you are on the right path to protect your brand. Call us at 202-800-3754 or contact us online to set up a consultation with a federal trademark attorney. Our team works hard to understand your business’s needs and come up with a strategy that works for you.