Clients often ask if they can file for a trademark registration before they actually use their mark in commerce. The question usually comes up when they realize the way they have been using their mark may not technically constitute trademark usage. The short answer to this question is yes. Under the U.S. Trademark Act, Section 1(b) (i.e., 15 U.S.C. 1051(b)), it is permissible to file a trademark registration application before actually using a mark.
How does it work? Under Section 1(b), an applicant may file a trademark registration application if they have a bona fide intention to use the mark in commerce. Filing of the intent-to-use trademark application does not itself automatically give an applicant trademark rights that can be enforced against third parties. Rather, it provides the applicant the ability to obtain trademark rights that have a priority date as of the application filing date even though the applicant did not start using the mark until a later date.
The applicant will not be able to enforce any trademark rights against third parties until after the applicant has actually used the mark as a trademark. Thus, in order to perfect its trademark rights, the applicant must still use the mark in commerce as a trademark. Evidence that the mark has been used in commerce must be submitted to the USPTO in the intent-to-use application before the applicant can obtain the trademark registration. The evidence is submitted in the form of an Statement of Use/Amendment to Allege Use, which requires additional fees.
So what is the advantage of an intent-to-use trademark application? In the United States, a trademark that is in use first has superior rights over a conflicting mark that has a later date of first use. Businesses often spend a substantial amount time and money designing or developing a product brand or mark before launching the product into the market – long before the mark gets used in commerce. By filing an intent-to-use application, a business may protect its brand investment so that it maintain priority over any conflicting marks that came into use after filing of the trademark application but before the business actually commenced use of the mark.
There are a number of factors to consider when deciding whether or not to file an intent-to-use trademark application or an in-use trademark application, such as overall costs, risks, timing, anticipated use, etc. Before you determine whether or not an intent-to-use U.S. trademark application is appropriate for you, seek the advice of a competent trademark attorney.