How to Call Dibs on Your Brand Name (Intent-to-Use Trademark Applications)
So, after weeks of searching, you found the perfect name. The .com domain is available, as are the handles on social media.
There’s just one problem: you haven’t started using it yet.
The United States uses a First-to-Use priority system, meaning you have to use the name before you can trademark it.
At this point you might be wondering if it’s possible to at least call dibs on the name.
The answer is yes. That’s exactly what an Intent-to-Use trademark application is for.
What is an Intent-to-Use Trademark Application?
An Intent-to-Use trademark application lets you file with the United States Patent and Trademark Office (the “USPTO”) before you’ve actually started using the trademark.
Basically, it lets you call dibs.
So, instead of saying “I’m already using this trademark,” an Intent-to-Use application lets you say, “I’m going to start using this trademark soon, so don’t take it.”
This is one of the most entrepreneur-friendly features of U.S. trademark law.
That’s because the United States uses a First-to-Use priority system, while most of the world uses a First-to-File priority system. What’s a priority system? It’s how the winner is decided if there’s a lawsuit between two people using the same trademark.
In a First-to-File priority system, whoever files their trademark application first wins; using the trademark in your business doesn’t matter.
In a First-to-Use priority system, the opposite is true. Whoever is first to use the trademark in their business has priority. The first user can cancel the trademark registration of a later user in a First-to-Use priority system, even if the later user filed first.
By filing an Intent-to-Use application, your priority is established on the date you file the application, not the date you start using it in your business.
That lets you build out your vision with the peace of mind that you won’t need to spend thousands or tens of thousands on a rebrand after you launch because of an unexpected cease-and-desist.
Intent-to-Use Trademark Timeline
Here’s how it works:
You file a trademark application just like any other. But when completing the application, you select the “Intent to Use” option instead of the “Currently in Use” option.
After you click submit, it’ll be about five months until you hear anything.
At the USPTO, an Examining Attorney reviews your application.
If they find any legal or procedural issues, they’ll issue an Office Action for you to respond to. If the Examining Attorney doesn’t find anything or you fix the issues they bring up, you’ll proceed to Publication.
After the Examining Attorney approves your application, your trademark will be published for opposition in the Trademark Official Gazette.
During this 30-day period, anyone who thinks your trademark being registered will harm their trademark has an opportunity to speak up and stop your registration from happening.
If nothing happens after those 30 days, you’ll receive a Notice of Allowance from the USPTO in a few months.
This means you successfully passed the Examination and Publication stages, and your trademark will be registered after you submit proof that you’re using it.
You have six months from when the Notice of Allowance is issued to start using the trademark and submit a Specimen to the USPTO. A Specimen is the legal term for proof of use.
When you submit your Specimen, you will also need to file a Statement of Use and pay the filing fee for doing so.
If you need more time to file your Statement of Use, extensions are available.
You may submit up to five Requests for Extensions. If all five are granted, your Specimen and Statement of Use would be required three years from when your Notice of Allowance was issued.
Each request carries a filing fee.
After the USPTO accepts your Specimen and Statement of Use, your trademark will be registered, and you’ll receive your Certificate of Registration.
Intent-to-Use Application Costs
When you file a trademark application, you must file in at least one of 45 Classes based on what your business does. Your total costs to file the application will depend on the number of Classes you’re filing in:
Cost to file a trademark application: $350 per Class
Cost to file a Statement of Use: $150 per Class
Cost to file a Request for Extension: $125 per Class
Pivoters Beware
It’s important to note that your trademark registration is approved only for the goods and services you listed on your application.
It’s not an absolute claim over the name in any line of business you choose.
If you pivot too far from the goods and services on your application, your Specimen and Statement of Use will be rejected, preventing you from successfully registering the trademark.
Key Takeaways
Intent-to-Use trademark applications allow you to get trademark rights before you start using the trademark in your business.
You have 6 months after the USPTO approves your trademark for registration to start using it.
There are increased filing fees for an Intent-to-Use application.
Your regisration is approved for the goods and services listed on the application. If you pivot, you may lose the trademark approval you have.