Intent to Use Trademark Application: Registering Before Launching

Updated: Feb 25

What Is an Intent To Use Application


There are two types of trademark registration applications that can be filed


  • Intent to Use (ITU), and

  • Active Use (AU).


An ITU application can be used for trademarks that have not been used in commerce if you have a good faith intent to do so in the future. Use in commerce varies:


1. If You're Selling Goods: A mark is in use in commerce with goods when:


  • The mark is placed on the goods, packaging for the goods, or point-of-sale displays associated with the goods (including webpage displays), and

  • The goods are actually being sold or transported in commerce.


2. If You're Providing Services: A mark is in use in commerce with services when:


  • The mark is used in the sale, advertising, or rendering of the services, and

  • The services are actually being rendered in commerce.


For additional information concerning Use In Commerce read our blog post Use In Commerce: What Is It?


Thus, if you have a trademark you intend to use in commerce, then you can submit an ITU application to reserve your rights in the trademark.


Benefits of an Intent To Use Application


1. File Before Use - No need to wait until you fully flushed out your branding and marketing strategy (which can take several months). Submit your registration application as soon as you've selected a business name, logo, slogan, etc.


2. Priority - Gain an advantage over your competitors. The application date becomes your priority date throughout the United States if a legal conflict develops.


3. Smart Investment - Government review of your trademark before investing too much time, money, and emotions into a trademark that may be rejected or denied.


4. Plan for Expansion - You can use an ITU application with an active use application to register the goods/services that you currently use in commerce and reserve your trademark for future good/services. If you know you'll want to launch a new product or service in the next 2-3 years, you can file an ITU application now.


Intent To Use Application Steps


An ITU application proceeds as follows:


1. Review - After your application is submitted it will be assigned to an Examining Attorney who will review your trademark for likelihood of confusion and other legal requirements.


2. Publication - If the Examining Attorney believes your application is in compliance with all required legal standards, the Examining Attorney will approve your application for publication.

  • Publication is a 30 day period where the UPSTO notifies the public of its intent to register a trademark and gives the public an ability to object to the registration of a trademark.

3. Notice of Allowance - After the publication period has ended, the USPTO will issue a Notice of Allowance (NOA). A NOA is a notice indicating your mark has been “allowed” for registration (but has not yet registered).


4. Submit Evidence of Use In Commerce - Before your trademark can fully register, you must provide evidence of use in commerce to the USPTO. To do so you must (1) file a Statement of Use, (2) within 6 months of the NOA date, and (3) pay required fees.

  • Note, you can submit evidence of use in commerce before an NOA is issued by amending your trademark application to allege use.


5. Trademark Registered - The USPTO will review your evidence of use and if it finds your evidence to be sufficient, the USPTO will approve your trademark for full registration and mail a trademark registration certificate.


What If You Need More Time


If you need more than 6 months after an NOA is issued to provide evidence of use in commerce, don't worry! You can file four more extension requests. Each extension request must:

  • Be receive before the previous six-month extension period expires;

  • Include a showing of “good cause,” which is a statement of your ongoing efforts to make use of your mark, such as market research or steps to acquire distributors.

Each extension period will be for six month. In total (including all extension periods) you will have a maximum of 36 months from the date the NOA was issued to file your statement of use.


If you need assistance submitting an Intent To Use application or want to learn more about trademark registration email us at info@brandactivatorlawfirm.com.

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