Trademarks are essential assets in the protection of brand identity, as well as a brand's reputation in the market, but applying for trademark protection can be a tumultuous task. Among the multitude of considerations applicants face, various jurisdictions allow for the filing of trademark applications even before the mark in question has been used.

Those filing before the United States Patent and Trademark Office (USPTO), for example, are afforded the opportunity to file an intent-to-use trademark application if they so wish, but what sets it apart from a use-based application?

Intent-to-use Trademark Applications

An intent-to-use (ITU) trademark application before the USPTO can be a viable and useful filing option for applicants who have not yet utilized their mark in commerce, but have a good faith intention to do so in the future. The applicant must provide evidence of said intention to the USPTO, typically in the form of a declaration or statement of use.

Whilst a mark filed for via an ITU application will not be registered until the trademark has been demonstrated to have been used in commerce, such applications can be a great option for those who wish to secure the earliest possible application filing date, even before they have used the mark. In turn, this provides priority of the mark over potential competitor's later marks, comprising one advantageous element of ITU filings. This can be particularly useful for companies that are still in the developmental stages of business and have not yet begun to sell or advertise their goods or services, but intend to in the foreseeable future.

It is important for applicants to note that an ITU application does not provide immediate protection for a trademark, and that it is required for the mark to be used in commerce within a certain time frame depending on the circumstances surrounding the application.

Use in commerce as per the USPTO can constitute use of the mark with respect to goods and/or services, and can occur on an interstate, territorial, or foreign commerce basis. The demonstration of use can comprise the trademark being placed on the packaging of the good, for example, and requires the good to be sold or transported in commerce. In relation to services, use can comprise the sale or advertising of the same, and proof that the service is being rendered in commerce.

There are three periods during which an ITU trademark applicant can claim the mark to have been used in commerce, the first being any time between the filing date of the ITU and the date of approval by the examiner of the mark for publication. The second option is for the applicant to confirm the mark's use in commerce within the first six months following the date of issuance of the Notice of Allowance from the USPTO.

If neither of the first two options are viable, applicants may also file up to five requests for an extension of time to file a Statement of Use, constituting a maximum extension period of 3 years, alongside payment of the corresponding fee. If confirmation of use of the trademark is not provided within these time constraints, the ITU application may be abandoned, rendering the trademark vulnerable for use by others.

Use-Based Trademark Applications

A use-based trademark application, on the other hand, can be filed only once a trademark which is the subject of the application has been effectively used in commerce.

In order to be eligible for filing a use-based application, the trademark must have been used in connection with the sale or advertising of goods or services in commerce, as with the eventual registration of ITU applications. Evidence of said use is required to be provided to the USPTO, typically in the form of a specimen or sample of the goods or services with the trademark.

Once the application is approved, the trademark is registered with the USPTO, and the company has exclusive rights to use the mark in connection with the goods or services listed in the registration.

One advantage of filing for a use-based application is that it provides for a more expedited route of protection of the trademark in contrast with an ITU application.

Other jurisdictions operate different but similar systems to the US in relation to such applications, with neighboring Canada allowing for the filing of a trademark application on a "propose to use" basis, which potentially constitutes a less stringent requirement to meet than intent-to-use for applicants.

It's important to note that trademark laws and regulations vary by country and can be complex. If you are interested in filing a trademark application or learning more about intent-to-use applications, please contact us here at IP-Coster.

When it comes to protecting one's intellectual property, there are several international agreements which assist in the facilitation of IP protection across the globe. The obtainment of trademark protection in multiple jurisdictions, in particular, is greatly assisted by the Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the same Agreement of 1989.

Combined, they create what is known as the Madrid System for the International Registration of Marks, allowing for an often more efficient route of obtaining trademark protection in multiple jurisdictions simultaneously. As such, an "international" application can be filed designating any/all Madrid member states, and the subsequent registrations will be effective individually in each designated state as if it had been filed through the national route.

Any Member States of the Paris Convention for the Protection of Industrial Property may accede to and join the Madrid Agreement and/or Protocol, with states being able to adhere to either just one, or both, of the treaties.

Whilst both the Agreement and the Protocol are complementary of one another and are parallel in nature, they operate as separate, independent treaties and as such, possess several inherent differences. Applications can therefore differ in requirements, expected time limits, and fees, for example, depending on whether an application was filed under the Madrid Agreement, or the Madrid Protocol.

The Agreement itself, for instance, preceded the Protocol by over a hundred years, intending to set the foundations for a more efficient and simpler route of obtaining international trademark protection than having to file in multiple jurisdictions separately.

The Protocol, on the other hand, was created aiming to add a higher level of flexibility to the Madrid System, with the adjustments allowing for the System to be compatible with the national legislation of more countries and intergovernmental organizations who were previously unable to accede to the Agreement based on their domestic laws. Moreover, the Agreement only allowed for the accession of individual states, whilst the Protocol opened up the opportunity for accession in relation to intergovernmental organizations in addition to independent countries.

The two treaties also present multiple differences when it comes to the filing and maintenance of trademark rights. The Agreement, for example, required an international application to be filed based upon a home country registration. The Protocol, however, introduced the possibility for an international registration to be based on either a national, or "basic", trademark application, or upon a basic trademark registration with the trademark office of a Contracting Party to the Protocol.

The Agreement further required an international application to be filed in an office of origin in a country in which the applicant has “a real and effective industrial or commercial establishment.”, with applicants only able to file in their country of domicile if they had no such commercial establishment. Once introduced, however, the Protocol allowed for applicants to choose an office of origin based on either commercial establishment or domicile.

At the time of introduction, the Madrid Agreement obligated applications to solely be filed in the French language, however once the Protocol was introduced, applicants were also permitted to file applications in the English language under the Madrid System. In 2004, Spanish was introduced as an additional language to the System, thus meaning applicants may file international applications in any of the three operational languages of the Madrid System regardless of whether an application is filed under the Agreement or Protocol. Individual offices of origin, however, may enforce restrictions as to which of the three languages are permitted for use.

The procedure for the payment of fees also differs between the two treaties. The Agreement, for example, obliged applicants to pay a fixed fee for each designated Contracting Party, whilst the introduction of the Protocol meant that applicants could either pay via fixed fee, or Madrid Contracting States could opt for an individual fee system in which the state may charge the same fees for international applications as they would had the application been national in nature.

Concerning trademark refusal periods, the Agreement allows for a total of 12 months for such a period, whilst the later introduced Protocol brought in a period of 18 months for refusal which also has the possibility of being extended. However, if the country of origin and designated country are both parties to the Madrid Agreement and Protocol, according to article 9sexies of the Protocol, a 12 month period for the issuance of provisional refusal is applicable.

Finally, the trademark validity period under the Agreement comprised a total of 20 years, whereas the Protocol introduced a new period of 10 years. Despite the considerable shortening of the time period, this provided the opportunity for the elimination of unused or unmaintained trademarks from the International Register.

Despite varying in a multitude of ways, both the Madrid Agreement and the Madrid Protocol have proved to be an asset to the obtainment of trademark rights internationally. Covering 130 countries with 114 members, the Madrid Union encompasses just how useful global cooperation and centralized IP systems can be.

The process of obtaining intellectual property protection in multiple countries simultaneously can be a long and arduous task. With every jurisdiction enforcing their own respective legislation, the filing requirements, as well as procedures regarding the post-grant maintenance of IP, can vary greatly between countries.

Various treaties have been introduced across the globe to assist in the facilitation of a more efficient process for world-wide IP protection. The most poignant international conventions that assist in this regard are the Patent Cooperation Treaty (PCT) and the Paris Convention Treaty. Whilst they are different in nature they are closely linked, with states obliged to first become a member of the Paris Convention before they are able to join as a Contracting State of the PCT.

The Paris Convention Treaty was signed in 1883, and among a broad range of common rules, it provides for the right to national treatment and the right to priority. The concept of national treatment is a vital one, and ensures that Paris Convention member states afford the same level of patent protection and legal remedies to international applicants and right holders as they would to state nationals, preventing different countries from treating non-nationals unfavorably in relation to IP protection.

The right to priority is also of great importance, ensuring that if applicants file an initial application in one contracting state, they have a period of 12 months to file an application regarding the same invention in any other member state(s) without forfeiting the novelty of the invention, and retaining the priority date from the moment of first filing.

The PCT, on the other hand, provides for an efficient method for the filing of patent applications in multiple countries simultaneously via an "international" application. The PCT does not provide for an "international patent", since patent protection can only be valid within a given national/regional territorial jurisdiction. Rather, it serves as a basis for further national patent proceedings in the countries of the applicants interest, meaning a patent obtained via the PCT route is still national or regional in nature. Subsequently, it is possible for applicants to file an initial application with a PCT receiving office which acts as a basis for subsequent filings in any other designated PCT member states in which the applicant wishes to file. A patent filed via the PCT will have the same effect in the designated states as if it had been filed directly in that jurisdiction.

On balance, there are advantages when it comes to the consideration of whether to utilize the Paris Convention or PCT routes for patent filing and protection.

Whilst both routes typically include the filing of a local application with an office of first filing to obtain a priority date, the Paris Convention affords a period of twelve months for applicants to assess which countries they wish to file in before having to commence the national route of protection. The PCT route on the other hand, means that applications won't enter the international phase until 18 months from the date of first filing, and typically take up to 30/31 months, depending on the designated jurisdictions, for the entering of the national phase.

As such, the Paris route may be beneficial for those who wish to obtain patent protection in a few countries in a smaller amount of time. On the other hand, the PCT may benefit those who wish to make use of a longer time period before they must fulfil the national requirements of the designated states for protection, and to utilize this time period to estimate the chances of successful registration of the invention.

Moreover, whilst the PCT allows for applicants to further file in all PCT signatory member states stemming from the one international application, applicants must file separate, individual applications in the countries of choice if utilizing the Paris route. Additionally, the formality criteria, international search, preliminary reports and international publications are centralized and standardized by the PCT system, whereas the same is not the case when filing through the Paris Convention. It is worth noting, however, that the formal requirements of each member state designated will still need to be met during PCT national phase entry.

When considering whether to file via the Paris route or the PCT, the costs involved may provide a good indication as to which an applicant should choose. Overall, the fees incurred for the PCT may prove more cost efficient if an applicant wishes to file in several different states at the same time, however the upfront costs related to the PCT are relatively high.

Subsequently, if an applicant is only planning on filing for protection in a small number of countries, the Paris route is likely to prove less expensive than the costlier PCT and therefore more cost-efficient. On the other hand, if an applicant intends to file in multiple countries, the PCT may result in a cheaper outcome by incorporating many of the fees all at once. For context, PCT applications typically incur three fees: an international filing fee of 1,330 Swiss francs; a search fee which can range from approx. 150 - 2,000 Swiss francs (ISA dependent); and a transmittal fee depending on the Receiving Office.

Both the PCT and Paris Convention each offer their own advantages for those considering filing patent applications in more than one jurisdiction.

In order for a patent application to be considered as registrable, there are three vital elements that must be satisfied. This trinity of the "three pillars" of patentability requires that the invention claimed in a patent application has novelty, industrial applicability and an inventive step.

The element of novelty, or "newness" for a patent application is therefore crucial. As per the European Patent Convention (EPC), an invention is regarded as novel if it "does not form part of the state of the art".

State of the art is defined as any subject matter relating to the invention to which a patent application relates, which has been disclosed or made available to the public in any manner prior to the patent application filing date. Such subject matter may include a product, process, or any other relevant information regarding the invention claimed.

In the instance that public disclosure had been made for any reason prior to the filing of a patent application, it may be the case that the requirement of novelty is not fulfilled, and the invention contained therein is rendered unregistrable.

On the flip side, patent legislation in many jurisdictions offers a novelty grace period. This constitutes a specific period of time, typically 6 or 12 months prior to the date of filing a patent application, depending on the country. For example, the US and Canada, among others, provide for a 12-month grace period, whereas other countries, such as France and the United Kingdom, afford applicants a 6-month novelty grace period.

A grace period itself ensures that any disclosure concerning the patent application materials or subject matter within that set time period is not seen to be detrimental to the requirement of novelty of an invention.

As typical with any legislation, each jurisdiction sets forth varying conditions upon which an applicant can take advantage of the novelty grace period. Some countries, for example, recognise disclosure as authorized if said disclosure is made at an officially recognized event, such as an official exhibition, or a scientific presentation, so long as such official disclosure is made within the prescribed grace period time limit prior to the filing date. Other jurisdictions may exclude disclosure from the prior art if such disclosure was made in bad faith by a third party, so long as corresponding proof is provided.

If any unauthorized disclosure has been made, it is classified as part of the "prior art". Prior art constitutes anything that is similar in nature to the invention contained within a patent application, and had been disclosed prior to the application filing date.

Prior art can comprise a wide variety of matter, including articles, scientific periodicals, pending patent applications, both commercially available and unavailable products, oral presentations, and even social media content. The only exceptions to any related disclosure being considered as prior art are if the disclosed subject matter is confidential and related to government, trade secrets or other applicable circumstances, or if the material was insufficiently disclosed.

With prior art being a vastly broad concept, it is vital for IP applicants to carefully and closely analyze any potential previously disclosed subject matter to avoid the possibility of their invention being considered as not novel or new. The option of performing a search is highly useful in this regard. For example, a PCT application will be subject to an international search, undertaken by a competent International Searching Authority (ISA), resulting in an International Search Report (ISR).

An ISR details any prior art found by the search which may impact the patentability of the subject matter contained within the international application. A preliminary Written Opinion of the International Searching Authority (WOISA) is also provided, advising whether the invention claimed in the international application appears to meet all three of the patentability criteria. Similar searches can be performed for national and regional patent applications, depending on the jurisdiction.