Intent to Use Trademark: The Process & Timeline
When it comes to trademarks, the world can be a bit of a wild west. With countless businesses vying for attention, protecting your brand is more critical than ever. Trademarks serve as the guardians of your brand identity, helping customers identify your products and services amidst a sea of competitors. But what if you have a brilliant idea for a brand, a catchy name, or a unique logo, yet you haven’t quite launched your venture into the world of commerce? Enter the world of the Intent to Use trademark – a valuable tool for entrepreneurs and businesses with big plans but who haven’t quite taken the plunge into the marketplace.
An Intent to Use (ITU) trademark allows securing your brand before launching into commerce. Essentially, it’s reserving your trademark with the intention of using it within three to four years. You must genuinely plan to use it; it’s not a free pass.
One significant benefit is priority. The filing date becomes your priority date, putting you ahead of later applicants. This matters for publication, establishing your place in the trademark line.
ITU trademarks are useful when planning expansions or launches. For instance, a gym planning to expand to neighboring states, an online store preparing for launch, or a platform in beta testing can secure their brand identity before the big debut.
It differs for goods and services. For goods, it involves placing your mark on products or their packaging, actually selling or transporting them. For services, it’s actively using the mark in advertising or provision of those services. It must align with regular trade practices and can involve interstate, territorial, or foreign commerce.
There are three periods: before approval for publication, within six months of the Notice of Allowance (NOA) issue date, and within granted extension periods after the NOA. You file for use in commerce within these windows to move from ITU to In Use trademarks.
Yes, extensions are possible. You can file up to five extension requests in consecutive six-month periods. Demonstrating ongoing efforts to use your mark is crucial to qualify for these extensions.
It’s a multi-step process, lasting around 6-9 months for initial review, with potential rejections or opposition periods. From filing to registration, it spans several stages, typically taking years with various deadlines and responses along the way.
ITU trademarks offer a strategic way to protect your brand before entering the market. They provide flexibility, securing your mark’s priority while allowing time for business preparations before actual launch. However, remember that genuine use is essential for long-term protection and success.
In this post, we’re going to explore the fascinating world of Intent to Use trademarks, explaining what they are, their advantages, and why they’re a game-changer for businesses of all sizes. We’ll dive into real-life scenarios where an Intent to Use trademark makes perfect sense and decode the mysterious language of “use in commerce.” Finally, we’ll demystify the various periods during which you can claim use in commerce before your mark can be registered, and the extension process, ensuring that you’re well-equipped with the knowledge you need to navigate the trademark landscape.

Understanding the Intent to Use Trademark
So, what exactly is an Intent to Use trademark? In simple terms, it means you haven’t yet started using your trademark in commerce, but you’re itching to do so within the next three to four years. The key here is that you must genuinely intend to use it. ITU trademarks offer you the chance to secure your brand identity and logo before you launch your business, allowing you to protect your intellectual property even if your goods or services are still on the drawing board.
But remember, this is not a free pass – you must eventually use your mark within the required time frame to achieve trademark registration. It’s like reserving a table at a restaurant for dinner tonight; you need to show up and enjoy your meal to make it count.
The Advantages of Filing an Intent to Use Trademark
Now, let’s talk about the perks of opting for an Intent to Use trademark. One significant advantage is that the filing date of your application is the date when all the necessary elements are received by the United States Patent and Trademark Office (USPTO).
Why does this matter?
Well, it’s all about priority. The effective filing date dictates who gets first dibs when it comes to publication or issue and constructive use priority. In other words, it helps establish your place in the line of trademark applicants, ensuring you’re ahead of those who apply later.
Real-World Scenarios: When ITU Trademarks Make Sense

To illustrate the power of Intent to Use trademarks, let’s explore three hypothetical scenarios where businesses could benefit from this approach:
FitLife Gym Expansion: Imagine a personal trainer couple in sunny California, Bob and Alice, who currently run their fitness sessions exclusively at their single gym. However, they’ve got big dreams of expanding to neighboring states. In this case, filing an Intent to Use trademark would allow them to secure their brand name and logo before they embark on their journey to fitness domination beyond California.
Threads by Design: Meet Sarah, a talented clothing designer with a keen eye for fashion. She’s all set to launch her online clothing store but hasn’t quite hit the ‘publish’ button yet. An ITU trademark would protect her brand name and designs from copycats and competitors while she prepares for her grand online debut.
CaterConnect: Picture a social networking website and mobile application designed exclusively for professional caterers. Currently in beta testing & only available to in-house testers. To safeguard their unique platform and brand identity, they could opt for an Intent to Use trademark while they continue refining their service for a broader audience.
Decoding "Use in Commerce"
Now, let’s break down the nitty-gritty of “use in commerce.” This phrase is crucial because it determines whether your trademark is truly in action or merely a placeholder.

There are two main scenarios to consider:
Use in Commerce with Goods: This applies when your mark is placed on the goods, their packaging, or associated point-of-sale displays (even webpages). Crucially, the goods must actually be sold or transported in commerce. In essence, it’s about the tangible presence of your brand in the market.
Use in Commerce with Services: For businesses offering services, use in commerce means that your mark is actively used in the sale, advertising, or provision of those services. The services must genuinely be in operation, not just on paper. This use must also align with the ordinary course of trade, ruling out token gestures designed solely to reserve trademark rights.
Now, let’s talk about the different types of commerce under federal law: interstate (between two or more U.S. states), territorial (between the United States and a territory of the United States), and foreign commerce (between the United States and a foreign country). Purely intrastate commerce, limited to one state, is usually not considered acceptable use in commerce unless it directly impacts interstate, territorial, or foreign commerce.

Examples of use in commerce include restaurant services that cater to interstate travelers, billiard parlors operating in multiple states, retail department stores with out-of-state customers, and services available nationwide and internationally through the internet.
Claiming Use in Commerce: The Three Periods
When it comes to claiming use in commerce, you’ve got three distinct periods in which you can make your move from an Intent to Use trademark to an In Use trademark:
Before Your Application is Approved for Publication: This is the period between the date you file your application and the moment the USPTO examining attorney gives your mark the green light for publication in the Trademark Official Gazette (TMOG). During this time, you can file an Amendment to Allege Use to stake your claim.
Within Six Months of the Notice of Allowance (NOA) Issue Date: If you receive a Notice of Allowance (NOA), indicating your mark has been “allowed” for registration, you can claim use in commerce within the first six months following the NOA issue date. To do this, you’ll need to file a Statement of Use.
Within a Granted Extension of Time After the NOA Issue Date: Sometimes, you might need more time to prepare for launch. If that’s the case, you can claim use in commerce after receiving a NOA by filing a Request for Extension of Time to File a Statement of Use. Keep in mind that you must submit the Statement of Use within the granted extension period.
The fee for filing an Amendment to Allege Use (AAU) or a Statement of Use (SOU) with the USPTO is $150 per class of goods or services.
This means that if your application covers multiple classes, you will need to pay $150 for each one.
Filing Extensions for an Intent to Use Trademark
If you find yourself needing more time to get your business up and running, the extension process is your ally. Here’s what you need to know:
– You can file the first extension request within six months after receiving the NOA. It comes with a fee and requires a verified statement of your continued bona fide intention to use your mark in commerce. You’ll then have one year from the NOA issue date to submit your Statement of Use.
– You’re allowed to file up to four more extension requests, each covering a consecutive six-month extension period. To qualify for subsequent extensions, you must demonstrate “good cause.” This means showing ongoing efforts to put your mark to use, like market research or steps to acquire distributors.
– You have a maximum possible extension time of 36 months from the date of the NOA to file your Statement of Use.
– The fee for an Extension request is $125 per class.
Amendment to Allege Use (AAU) or Statement of Use (SOU) is Accepted
Now, let’s fast forward to the moment of truth. What happens after your Amendment to Allege Use or Statement of Use is accepted?
When your Amendment to Allege Use gets the nod, your application transitions from being based on intent to use to actual use in commerce. A trademark examining attorney will scrutinize it, ensuring it meets all legal requirements and has no refusals to address. If everything checks out, your mark will be approved for publication in the online Trademark Official Gazette (TMOG). About a month later, your mark will make its debut in the TMOG.
Within 30 days of the publishing date, anyone who believes their business might suffer from your mark’s registration can file an objection, known as an “opposition.” Think of it as a sort of federal court proceeding, but with the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges who make the call. If an opposition is filed, it could delay your mark’s registration, so it’s wise to consider legal counsel, as these proceedings can get complex.
Once the 30-day opposition period (including extensions) ends or any oppositions are resolved in your favor, your mark will be registered. This is the moment your brand officially becomes a part of the exclusive club of registered trademarks.
When your Statement of Use is accepted, your mark is not subjected to another opposition period. The USPTO will register your mark and announce the registration in the TMOG. Once your mark receives an official registration date, a registration certificate will be sent your way within a week. This certificate is your golden ticket, allowing you to proudly display the ® symbol alongside your trademark.
Roadmap for an Intent to Use Trademark Application
Check out the current trademark processing wait times to estimate when your application will be assigned to an examining attorney. Of course, this timeline does not cover every scenario.
Step 1: Application Filed
– You kickstart the process by submitting an application based on your intention to use your trademark in commerce.
– Your application receives a USPTO serial number for tracking.
– You can monitor your application’s status by entering the serial number in the Trademark Status and Document Retrieval (TSDR) system or calling the trademark status line at 571-272-5400, or toll-free at 1-800-786-9199 (select option 1, then option 2).
– Approximately six to nine months later, proceed to Step 2.
Step 2: USPTO Reviews Application
– Your application is assessed to ensure it meets filing requirements.
– An examining attorney is assigned to review if federal law allows registration of your trademark.
– Keep in mind that filing fees are generally non-refundable, even if your application is refused later.
– In about one month, proceed to either Step 3a or Step 3b.
Step 3a: USPTO Approves and Publishes for Opposition
– If there are no grounds for refusal, and your application satisfies legal requirements, it’s approved for publication in the Trademark Official Gazette (TMOG).
– The TMOG is a weekly online publication that announces your trademark’s impending registration.
– About one month after approval, your trademark makes its debut in the TMOG.
– Within 30 days of publication, anyone concerned about your trademark potentially harming their business can file an objection, known as an “opposition.”
– An opposition is a bit like a federal court proceeding, overseen by the Trademark Trial and Appeal Board (TTAB), a panel of administrative judges.
– If an opposition is filed, your trademark’s registration is delayed until it’s resolved.
– Approximately three months later, head to Step 8.
Step 3b: USPTO Issues Office Action
– If there are grounds for refusal or your application doesn’t meet legal requirements, an office action is issued.
– You must respond within three months or request a three-month extension (with a fee).
– Within three to six months, move on to either Step 4a or Step 4b.
Step 4a: Timely Response to Office Action
– To prevent abandonment, you must submit a timely response addressing refusals and requirements.
– The examining attorney reviews your response.
– In about one to two months, proceed to Step 5a or Step 5b.
Step 4b: No Response – Application Abandons
– If you don’t respond within three months, your application is abandoned.
– You’ll receive a Notice of Abandonment, and your trademark won’t register.
– To revive your application, file a petition within two months, along with the petition fee.
– If filed later than two months after abandonment, you’ll need to start a new application.
– In about one to two months, move on to Step 5a or Step 5b.
Step 5a: USPTO Approves and Publishes for Opposition
– If no grounds for refusal remain, and your application meets legal requirements, it’s approved for publication in the TMOG.
– Your trademark is announced for registration in the TMOG about one month after approval.
– Within 30 days of publication, anyone worried about your trademark’s impact on their business can file an opposition.
– This process extends the time between publication and registration.
– Roughly three months later, head to Step 8.
Step 5b: USPTO Issues Final Office Action
– If your response doesn’t resolve all refusals and requirements, a “final” refusal letter is issued.
– You can appeal to the TTAB or submit a response within three months.
– An extension request (for a fee) is an option for an extra three months.
– In three to six months, move on to either Step 6a or Step 6b.
Step 6a: File an Appeal and/or Response
– To prevent abandonment, file a Notice of Appeal to the TTAB or submit a response within the timeframe.
– If your response doesn’t address all final refusals and requirements and no appeal is filed, your application will abandon.
– In about one to two months, proceed to Step 7a or Step 7b.
Step 6b: No Appeal or Resolution – Application Abandons
– If you don’t appeal or address remaining issues within the specified timeframes, your application abandons.
– A Notice of Abandonment is issued.
– You can revive the application within two months of the Notice of Abandonment, along with the petition fee.
– If filed later than two months after abandonment, a new application is your only option.
– In about one to two months, move on to Step 7a or Step 7b.
Step 7a: USPTO Approves and Publishes for Opposition
– If no grounds for refusal remain, and your application meets legal requirements, it’s approved for publication in the TMOG.
– The TMOG announces your trademark’s pending registration about one month after approval.
– Within 30 days of publication, anyone concerned about your trademark harming their business can file an opposition.
– This process extends the time between publication and registration.
– Roughly three months later, head to Step 8.
Step 7b: TTAB Processes Your Appeal
– If your response doesn’t address final refusals and requirements and you filed an appeal with the TTAB, the appeal is processed.
– For more appeal details, visit the TTAB webpage.
– In three to six months, move on to Step 8.
Step 8: USPTO Issues Notice of Allowance (NOA)
– The NOA is issued within two months after your trademark’s TMOG publication.
– It doesn’t mean registration but indicates your trademark passed the opposition period.
– You must file an acceptable Statement of Use (SOU) within six months of the NOA date to proceed.
– Within six months, go to either Step 9a, Step 9b, or Step 9c.
Step 9a: File Extension Request(s)
– If you’re not yet using the trademark in commerce on all listed goods/services, file extension request(s) with the required fees.
– You can file up to five extension requests, each lasting six months.
– The first must be filed within six months of the NOA date.
– Continue to file extensions during an unexpired extension period.
– Within 30 months of the first extension request, proceed to Step 10.
Step 9b: Timely File Statement of Use (SOU)
– If you’re using the trademark in commerce on all listed goods/services, submit an SOU with fees within six months of the NOA date.
– You can’t withdraw the SOU but can file one extension request after the SOU for more time to address issues.
– In about one to two months, move on to Step 11.
Step 9c: No Timely SOU or Extension – Application Abandons
– If you don’t file an SOU or extension request within six months, a Notice of Abandonment is sent.
– The application can’t be processed, and your trademark won’t register.
– To restart, file a petition to revive within two months of the Notice of Abandonment, along with the petition fee.
– If filed later than two months after abandonment, a new application is the only option.
– In about one to two months, proceed to Step 11.
Step 10: Timely File SOU After Requesting Extensions
– If you’re using the trademark in commerce on all listed goods/services, submit an SOU with fees within six months of the last granted extension.
– You can’t withdraw the SOU but can file one extension request after the SOU for more time to address issues.
– Move on to Step 11.
Step 11: USPTO Reviews SOU
– The SOU is evaluated to ensure it meets minimum filing requirements.
– If it does, the SOU is forwarded to an examining attorney to determine if registration is permitted.
– Filing fees won’t be refunded even if the application is later refused.
– In about one month, go to Step 12a or Step 12b.
Step 12a: USPTO Approves SOU and Registers Your Trademark
– If no grounds for refusal exist and your application meets requirements, your SOU is approved.
– About two months after SOU approval, your trademark registers.
– Periodically, you must file maintenance documents and fees to keep the registration active.
– For details, see our blog post about Trademark Renewals
– After five to six years, go to Step 13 and every 10 years, proceed to Step 14.
Step 12b: USPTO Issues Office Action
– If grounds for refusal remain or requirements aren’t met, an office action is issued.
– You must respond within six months or take the same steps as in Step 3b.
– If the issues aren’t resolved, the application will abandon.
Step 13: File a Section 8
– Submit a Section 8 declaration within the first six years after registration or within six months after the end of the sixth year with an additional fee.
– This declaration should confirm whether your trademark is actively used in commerce, supported by evidence.
– Failure to file will result in registration cancellation. steps as in Step 3b.
Step 14: File a Section 8 & 9
– Submit both a Section 8 declaration and a Section 9 renewal within one year before the end of each 10-year period after registration, or within six months after the 10-year period ends.
– This combined declaration requires verification of trademark usage in commerce, evidence of such usage, and a renewal request to the USPTO.
– Failure to file will lead to registration cancellation and expiration.
In Conclusion
In conclusion, Intent to Use trademarks open up exciting possibilities for businesses and entrepreneurs who are eager to establish their brand identity but haven’t quite taken the leap into the world of commerce. They offer a flexible path to securing your trademark and provide ample opportunities to claim use in commerce before your mark can officially register.
Just remember, with great trademark power comes great responsibility – you must ultimately use your mark in commerce to protect and maintain your brand identity. So, whatever your goods and/or services may be, Intent to Use trademarks could be the key to safeguarding your brand’s future success.
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