Intent-to-Use (ITU) Applications

 

What Is an Intent-to-Use (ITU) Application? 
 

You filed a trademark or service mark application with the United States Patent and Trademark Office (USPTO) based on a good faith or bona fide intention to use your mark in commerce with your goods and/or in connection with your services in the near future. This is called an intent-to-use application or ITU application filed under Trademark Act Section 1(b). All applications must include a basis in the Trademark Act upon which you file and seek registration for your mark. An ITU application is based on the intent to use a trademark or service mark in the future. However, until you can show actual use of your mark in the marketplace with specific goods and/or services you will not be able to register your mark. In other words, you will not be able to register your mark unless and until you acceptably and timely convert your ITU application to one based on use in commerce.  

For more detailed information about an ITU application, see 15 U.S.C. §1051(b), 37 C.F.R. §2.34(a)(2), and TMEP §§806.01(b), 1101.
 

What Are the Advantages of Filing an ITU Application?  
                     

By filing an ITU application, you may begin the registration process before actually using your mark in commerce, so long as you have a good faith or bona fide intention to use your mark at a later date. Generally, your ITU application filing date is also your application’s effective filing date, which can be very important in the event a legal conflict develops and could provide your mark priority over someone else’s — in the USPTO or in the marketplace. The first user of a mark often wins in these types of conflicts.

For more detailed information about the advantage of an ITU application, see 15 U.S.C. §1057(c); M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1374, 114 USPQ2d 1892, 1896-97 (Fed. Cir. 2015); and TMEP §§201.01, 201.02.
 

How Do You Show a Good Faith/Bona Fide Intention to Use Your Mark in Commerce? 
 

Your sworn statement of a bona fide intention to use the mark in commerce in your application is considered sufficient evidence of good faith. Generally, the USPTO does not evaluate your good faith when examining your application unless the application record clearly contradicts your own statement. However, considerations of good faith may be pursued by a third party in a legal proceeding, and so it is important to ensure you have documentation of your efforts to start your business involving the goods and/or services (such as product/services research or development efforts, market research, steps to acquire distributors, steps to obtain government approval) that relates to the date you filed your application.

For more detailed information about an applicant’s good faith or bona fide intention to use his or her mark in commerce, see Lincoln Nat’l Corp. v. Anderson, 110 USPQ2d 1271, 1277 (TTAB 2014); Swatch AG v. M. Z. Berger & Co., 108 USPQ2d 1463, 1477 (TTAB 2013), aff’d, 787 F.3d 1368 (Fed. Cir. 2015); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1443 (TTAB 2012); Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1726-27 (TTAB 2010); Lane Ltd. v. Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994); and TMEP §1101.
 

When Do You Have to Convert Your ITU Application to a Use in Commerce Basis?      
 

There are two possible time periods during which you may submit to the USPTO the necessary documents and fees needed to convert your ITU application to one based on use in commerce: 

(1) Before your application is approved for publication.

First, you may attempt to convert your application to one based on use in commerce between the date you filed your application and the date the USPTO trademark examining attorney approves your mark for publication in the USPTO’s Official Gazette (OG), a weekly online publication. During this time period, you would file an amendment to allege use (AAU) to convert your application to an application based on use in commerce.  For the requirements of an AAU, please see below. 

(2) After a Notice of Allowance has issued or within a granted extension of time.

Second, you may attempt to convert your application to one based on use in commerce (a) within the first six-months after the USPTO issues a “Notice of Allowance” (NOA), a notice sent once your mark has been published in the OG for thirty days without anyone opposing its registration, indicating your mark has been “allowed” (but not registered); or (b) within an unexpired extension period – see below for more about extensions. During this time period, you would file a statement of use (SOU) to convert your application to an application based on use in commerce. For the requirements of an SOU and for seeking an extension request, please see below. 

For more detailed information about when you need to file an allegation of use and an extension request, see 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76(a), 2.88(a), 2.89 and TMEP §§1103, 1104.03, 1106.01. In addition, see the ITU application timeline for when items should be filed and will be issued in an ITU application. Further, to check the status of your application and whether something should be filed, see the USPTO’s Check Status & View Documents webpage.
 

How Do You Convert Your ITU Application to a Use in Commerce Basis? 
 

To convert your ITU application to an application based on use in commerce, you must file either an Amendment to Allege Use (AAU) or a Statement of Use (SOU). The only difference between these two methods of proving use of the mark is the timing of when these documents can be filed.

(1) Before your application is approved for publication – Filing an AAU.  Please click on the links within the list below to find useful information about each of the required elements for filing an AAU.

An AAU must be filed between the date you filed your application and before it is approved for publication, and must include the following:  

  • Two statements:  (i) “Applicant believes applicant is the owner of the mark” and (ii) “the mark is in use in commerce.”

  • The date of first use of your mark anywhere on the goods or in connection with the services.

  • The date of first use of your mark in commerce on the goods or in connection with the services.

  • A list of the goods and/or services from the application for which use is being asserted.  

  • One specimen for each class showing how you use the mark in commerce with the goods and/or services for which use is being asserted.  If a single specimen supports multiple classes, you should specify which particular classes the specimen supports.

  • A filing fee for each class of goods and/or services for which use is being asserted.

  • Verification of the requirements above in (a) through (d) in an affidavit or signed declaration under 37 C.F.R. §2.20. 

An AAU is appropriately filed only when the mark has been used in commerce on or in connection with all the goods and/or services specified in the application (unless you delete the goods and/or services with which the mark has not yet been in use, or submit a request to divide out those goods and/or services into a newly-created application).

For more detailed information about the requirements for filing an AAU, see 37 C.F.R. §2.76(a)(2), (b) and TMEP §§1104.08, 1104.10 et seq. To file an AAU online, use the USPTO’s Trademark Electronic Application System (TEAS) “Statement of Use/Amendment to Allege Use for Intent-to-Use Application,” form number one (1), located under Intent to Use (ITU) Forms.

(2) After a Notice of Allowance (NOA) has issued (or within a granted extension of time) – Filing an SOU (or Extension Request).  Please click on the links within the list below to find useful information about each of the required elements for filing an SOU.

An SOU must be filed during the six-month period following the date the NOA issued (or within an unexpired extension period – see below for more about extensions). The requirements for an SOU are almost the same as for an AAU, except the listing of goods and/or services in the SOU will reflect all the goods and/or services specified in the NOA for which use is being asserted.  An SOU must include the following:

  • Two statements:  (i) “Applicant believes applicant is the owner of the mark” and (ii) “the mark is in use in commerce.”

  • The date of first use of your mark anywhere on the goods or in connection with the services.

  • The date of first use of your mark in commerce on the goods or in connection with the services.

  • A list of the goods and/or services from the NOA for which use is being asserted. 

  • One specimen for each class showing how you use the mark in commerce with the goods and/or services for which use is being asserted.  If a single specimen supports multiple classes, you should specify which particular classes the specimen supports.

  • A filing fee for each class of goods and/or services for which use is being asserted.

  • Verification of the requirements above in (a) through (d) in an affidavit or signed declaration under 37 C.F.R. §2.20. 

An SOU may only be filed when the mark has been used in commerce on or in connection with all the goods and/or services specified in the NOA (unless you delete the goods and/or services with which the mark has not yet been in use, or submit a request to divide out those goods and/or services into a newly-created application).

For more detailed information about the requirements for filing an SOU, see 37 C.F.R. §2.88(a)(2), (b) and TMEP §§1109.03, 1109.06, 1109.09-1109.16(d). To file an SOU online, use the USPTO’s Trademark Electronic Application System (TEAS) “Statement of Use/Amendment to Allege Use for Intent-to-Use Application,” form number one (1), located under Intent to Use (ITU) Forms.
 

Why Do Certain AAU/SOU Requirements Have to Be Verified?  What Does “Verified” or “Verification” Mean?
 

When filing an AAU or SOU, certain statements, the dates of use, and a list of the relevant goods and/or services for which use is asserted must be “verified.” Filing an application with the USPTO starts a legal proceeding regarding your trademark or service mark, and thus, statements made in your application and documents related to your application must be truthful and made with knowledge of the penalty of perjury under the laws of the United States. So, verifying a statement means that you are making a statement that is sworn to, made under oath or in a notarized affidavit, or with a written and signed declaration stating that you have been warned that willful false statements and the like are punishable by fine or imprisonment, or both and that such willful false statements could jeopardize the validity of your application or any resulting registration, and that statements made of your own knowledge are true, and all statements made on information and belief are believed to be true. 

For more detailed information about verification, see 37 C.F.R. §§2.2(n), 2.193(e)(1) and TMEP §§804, 804.04, 1104.10(b)(ii), 1109.11.
 

What Does “Use in Commerce” Mean? 
 

Your sworn assertion that you will be using your mark in commerce is normally acceptable without further investigation into whether the use you reference constitutes "use in commerce" under the Trademark Act. Generally, the USPTO does not evaluate your assertion of use in commerce when examining your application or related documents. However, information has been provided below regarding what constitutes “use in commerce” under the Trademark Act because third parties who believe they may be harmed by your registering your mark could potentially raise this issue in legal proceedings.

A mark is in use in commerce with goods when (1) the mark is placed on the goods, packaging for the goods, or displays associated with the goods (including webpage displays), and (2) the goods are actually being sold or transported in commerce. 

A mark is in use in commerce with services when (1) the mark is used in the sale, advertising, or rendering of the services, and (2) the services are actually being rendered in commerce.

Use in commerce must be in the “ordinary course of trade,” and not just token use made to reserve rights in a trademark or service mark.

The type of commerce required is that which is lawfully regulated by Congress; that is, interstate (between two or more U.S. states), territorial (between the United States and a territory of the United States), and foreign commerce (between the United States and a foreign country). Purely intrastate use (within one state) may not be sufficient unless such use directly affects or impacts interstate, territorial, or foreign commerce.

The following are examples of use in commerce: 

  • Restaurant services rendered at a single-location restaurant serving interstate travelers constituted use in commerce. 
  • Intrastate sale of imported wines by importer constituted use in commerce, where goods bearing labels supplied by applicant were shipped to the United States.
  • Automotive service station located in one state rendered services in commerce, where services were available to customers travelling interstate on federal highways.
  • Billiard parlor services located in one state rendered services in commerce, where applicant’s billiard parlor services were advertised in both Kansas and New York.
  • Motel services located in one state rendered services in commerce, where guests from out of state visited and the motel advertised nationally in magazines.
  • Retail department store services located in one state rendered services in commerce, where applicant issued credit cards to out-of-state residents and shipped catalogs and advertisements to out-of-state customers.
  • Services offered via the Internet have been held to constitute use in commerce, because the services are available nationally and internationally to individuals as they use interstate telephone lines to access a website.

For more detailed information, see 15 U.S.C. §1127 (definitions for “commerce” and “use in commerce”); Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662, 18 USPQ2d 1292 (Fed. Cir. 1991); In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261 (C.C.P.A. 1977); In re Gastown, Inc., 326 F.2d 780, 140 USPQ 216 (C.C.P.A. 1964); U.S. Shoe Corp. v. J. Riggs West, Inc., 221 USPQ 1020 (TTAB 1984); In re Ponderosa Motor Inns, Inc., 156 USPQ 474 (TTAB 1968); In re Federated Dep't Stores, Inc., 137 USPQ 670 (TTAB 1963); Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 USPQ2d 1430 (S.D.N.Y. 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (table decision); and TMEP §§901 et seq.
 

What if You Need More than Six Months After the NOA Issues to Use Your Mark in Commerce?  Can You Get an Extension of Time to Submit Your SOU? 
 

Yes, you may receive an extension of time by filing a timely and acceptable extension request. To file an extension request, you must file the request within six months after the NOA issued with a fee and a verified statement of your continued bona fide intention to use the mark in commerce. After this first extension request, four additional consecutive extension requests may be filed. Each of these four extension requests covers six month increments, and must be received by the USPTO before expiration of a previous six-month extension period. These four extension requests must include a sufficient showing of “good cause,” together with a fee and a verified statement of your continued bona fide intention to use the mark in commerce. “Good cause” means a statement of your ongoing efforts to make use of the mark, such as market research or steps to acquire distributors.

If you request all these extensions, you have a maximum possible extension time of thirty-six months from the date the USPTO issued the Notice of Allowance to file your SOU together with evidence of use. If you do not timely file an acceptable SOU, your application will be abandoned.

For more detailed information about filing an extension request, see 37 C.F.R. §2.89 and TMEP §§1108 et seq. To file an extension request online, use the USPTO’s Trademark Electronic Application System (TEAS) “Request for Extension of Time to File a Statement of Use,” form number two (2), located under Intent to Use (ITU) Forms.
 

Could the USPTO Reject my AAU or SOU? 
 

Yes, the USPTO may reject your AAU or SOU if you do not provide all the information required above, there is an issue with your specimens or dates of use, or you do not timely file your AAU or SOU with the USPTO. In such cases, the USPTO will send you an official letter explaining why the AAU or SOU is not acceptable and explain, if fixable, how to correct these issues.

If you cannot correct the issues with your AAU, you have the option to withdraw it, and your application would revert back to an ITU application. However, if you withdraw your AAU, the USPTO will not refund your AAU filing fee and you will have to convert your application to one based on use in commerce at a later date.

An SOU, however, cannot be withdrawn. You must try to correct whatever issues you have, because, if the SOU is not acceptable, you cannot file another one and the USPTO will not refund your SOU filing fee.  If you cannot fix your SOU, your application will be abandoned and you will have to start over by filing a new application, with a new application fee. 

For more detailed information about correcting problems with an AAU or SOU, see 37 C.F.R. §§2.76(d)-(f), 2.88(d)-(f) and TMEP §§1104.11, 1109.16 et seq.