So you are thinking about starting your own business in the United States, and it is more than likely that you would like to protect your business name and your logo. You are only working on the business-plan yet, but the logo is a bomb, and you want to have it registered as soon as possible.
You have been told that the United States Patent and Trademark Office requires trademark use to register rights to use the trademark. Since you have not started yet, does it mean that your right will remain unprotected until you are able to prove the use?
1. What does “intent-to-use” and “bona fide” mean
Trademark application in US has several differences from other countries.
First of all, as we have already mentioned, to show use of a trademark in commerce is a must. We should dig a little deeper to see how this works. There are two most common US trademark application types, and they are:
- actual use, and
- intent to use.
An actual use trademark application requires that you are already using the mark in commerce. Alternatively, an intent-to-use application can be used if you have not yet used the name in commerce, but plan on doing so in the future. This is called bona fide (or good faith) intention – you as an applicant “promise” to use your trademark, so that is why the UPSTO can later provide you as the owner with the exclusive right to use the trademark extending back to the filing date of the intent-to-use (ITU) application.
To mark your priority to use trademark can mean a lot if a legal conflict develops or could develop — at the USPTO or in the marketplace.
Although you don’t need to use your mark in commerce before filing an ITU-based application, you must show actual use of your mark in commerce by filing documents and paying additional fees within certain time frames before your mark can be registered. After doing this the UPSTO issues a Notice of Allowance (NOA) – a notice indicating your trademark has been seen as “intended for bona-fide future use” in connection with all the goods and/or services you claim.
2. How to claim use in commerce?
To claim use in commerce you have to file an Amendment to Allege Use or Statement of Use. Since today we consider situation with no previous trademark use
The USPTO will give you six months from the time you file your intent to use application to put your trademark in use and file documentation. If you need more time, you can file an extension request. The USPTO can give you up to five six-month extensions if you can show good cause for the extensions. In other words, as long as you can show there’s a reason you need the extensions, you can have up to three years from the time you first file your intent to use application.
3. What is after you have filed the Statement of Use?
So now you have filed your Statement of Use. Now, assuming the examining attorney approves it, then the mark will be registered and a certificate of registration will be issued. This period can take quite long, up to several months, so don’t be alarmed if you don’t receive a certificate of registration right away.