Tuesday, March 23, 2010

Why pay more for an intent-to-use application?

Dear Rich: I'm starting a business and the domain has been registered. I'm looking into registering the trademark and thought about using an intent to use application (ITU) to reserve the name until we are up and running. I realized it costs more for ITU then regular registration. What is the benefit of ITU? We were going to say that an ITU application is like having a dinner reservation at The French Laundry but then we remembered that our analogies usually suck.
Right, you had a question. ITUs are relatively new on the trademark scene--debuting back in the late eighties. Before that you could only file if you were actually using the mark. With an ITU, you can now file if you have a bona fide intention to use the mark within six months of the date the mark is approved for registration by the USPTO. If you are unable to put the mark into use within that period, you can purchase additional six-month extensions, one at a time until three years have passed (provided you are able to convince the USPTO that the reasons for the delays are legitimate).
The advantage of filing an intent-to-use application. Besides the fact that you get to reserve a mark, your filing date will serve as the date of your first use of the mark--assuming you go on to put the mark in actual use and take the other steps necessary to get the mark placed on the federal trademark register. This first-use date can be very important in the event a conflict develops with another mark--in the USPTO or in the marketplace. 
Ready to go? Once you decide to file on this basis and you are certain that you intend to use the mark, you should file as quickly as possible, to obtain the earliest possible date of first use. As you mentioned, the intent-to-use approach is more expensive than filing an actual use application--at least $100 more expensive, plus $150 for each additional six-month extension that is needed. Therefore, it is most appropriate to use the intent-to-use application when you have come up with a truly distinctive mark or you plan to spend big bucks "tooling up" to use your mark and you don't want to prepare branding materials, etc., until you know that the mark will be yours. 
Don't do ITU if ... The Dear RIch Staff recommends against using the ITU process for a mark that is legally weak--for instance, it uses common words in a common way or is descriptive of the products or services. In those cases, you will have little choice but to wait until you have put the mark into use and can demonstrate that the public associates the mark with your product or service. Keep in mind that the USPTO will only okay an ITU application for a mark that is distinctive. (By the way, the "French Laundry" is inherently distinctive for restaurant services.)