Intent to Use Trademark Filings: A Practical Guide

61 questions on intent to use trademark filings, answered and cited by the UpLaw editorial team.

• Are extensions of the Statement of Use deadline automatic?
• Can a court enjoin an ITU applicant from starting to use its mark?
• Can I file intent-to-use applications on more than one candidate name?
• Can I really file a trademark application before I have made or sold anything?
• Can I sell or transfer my intent-to-use application before I launch?
• Can I use intent-to-use filings to block competitors from names I don't plan to use?
• Can someone who started selling after I filed my ITU but before my launch beat my priority?
• Does an ITU protect me if a bigger company already uses the name?
• Does evidence created after the filing date count toward bona fide intent?
• Does the bona fide intent requirement apply to foreign-based applications too?
• Does the USPTO examine an intent-to-use application differently from a use-based one?
• Do I have to take concrete steps toward launch before filing an ITU?
• How does an intent-to-use filing protect a rebrand?
• How does an ITU filing defeat the Tea Rose–Rectanus good-faith remote-user defense?
• How does an ITU work in stealth product development and confidential transactions?
• How does the burden shift in a lack-of-bona-fide-intent challenge?
• How do fraud, non-use, and lack-of-bona-fide-intent challenges differ?
• How long do I have to start using the mark after a Notice of Allowance?
• How much actual use do I need to file my Statement of Use?
• How should M&A diligence handle a target's pending intent-to-use applications?
• If I already started selling under the mark before my ITU is allowed, what do I do?
• In a real dispute, how does the ITU filing date actually change the outcome?
• Is advertising a service enough to establish trademark use in commerce?
• Is a Notice of Allowance the same thing as a registration?
• Is there a safety net if my Statement of Use specimen turns out to be defective?
• Should I file a use-based application or an intent-to-use application?
• What activities count as "good cause" for extending the Statement of Use deadline?
• What are the filing bases for a U.S. trademark application?
• What are the most common mistakes ITU applicants make?
• What are the stages of an intent-to-use application from filing to registration?
• What are the three carve-outs to constructive use priority?
• What counts as "commerce" for trademark use in commerce?
• What does a documented clearance search do for an ITU applicant beyond finding conflicts?
• What does an intent-to-use filing look like start to finish, from naming to registration?
• What does "bona fide intent" require for an intent-to-use filing?
• What happens if I miss a Statement of Use deadline?
• What happens to my priority date when the mark finally registers?
• What is an Amendment to Allege Use and when do you file one?
• What is an intent-to-use trademark application?
• What is a non-use challenge to a trademark application?
• What is a Notice of Allowance and what does it mean?
• What is a Statement of Use and what must it contain?
• What is constructive use under 15 U.S.C. § 1057(c)?
• What is the difference between constructive use and constructive notice?
• What is the practical takeaway on intent-to-use filings for a founder?
• What is the relationship between the 1988 Act's two changes — the ITU basis and the redefinition of use?
• What is the standard for proving fraud on the USPTO in a trademark case?
• What kind of evidence proves bona fide intent to use a mark?
• What records should I keep to support an intent-to-use filing?
• What red flags do opposers use to attack an ITU applicant's intent?
• What specimen problems cause a Statement of Use to be refused?
• What were the leading token-use cases before the intent-to-use system existed?
• When can a third party challenge an ITU application, and on what grounds?
• When is a use-based filing better than an intent-to-use filing?
• When should a company file an ITU for a product launch?
• Why did Congress create the intent-to-use filing basis?
• Why does a business need an intent-to-use filing at all?
• Why does the law bar assignment of an unused intent-to-use application?
• Why is an ITU especially valuable in a fast-moving competitive sector?
• Why is an overbroad goods and services listing risky in an ITU application?
• Why is the ITU described as a shield against latecomers rather than a cure for conflicts?