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.

What’s priority right?

Priority right, which is activated by the first filing, shows that you’ve been the first to apply for an invention, industrial design or trademark. To make use of it, you need to claim your priority right when filing abroad.

What’s the time limit for claiming priority?

Applicants have “twelve months for patents and utility models, and six months for industrial designs and trademarks” (Paris Convention, Art.4) from the filing date of the initial application to take further actions.

Why shall I claim priority?

The Patent Office will decide on the novelty of your invention (check out our post on novelty) based on the priority date. If you filed without priority, all the information that became known in the world (including your first application, if published) would be a part of the state of the art, and your invention would no longer be considered new or novel.

All in all, priority claim preserves the rights of the applicants who want to obtain protection for their intellectual property in more than one country.

Trademarks are at the epicentre of both intellectual property and our daily lives, with brand names emblazoned into every moment of our day-to-day activities. From our morning cereal to TV adverts, right down to the toothpaste we use and the bottled water we drink, trademarks are everywhere, so let’s take a look at the particulars of this type of IP, and provide an overview of what can and cannot be registered.

Trademarks are used to identify and distinguish a company's products and/or services from those of its competitors. The most common types of trademarks are word, figurative, and combination marks, but may also comprise sounds, smells, 3D models, colours, or logos, depending on the allowances of the jurisdiction.

Trademarks themselves are registered for specific goods and/or services which, for many countries, are classified in the Nice Classification of Goods and Services. This is an international classification established by the Nice Agreement of 1957 and revised each year, presently utilized by approximately 150 IP offices including the regional offices of EUIPO, OAPI, ARIPO, and BOIP. At present, there are 34 possible classes of goods, and 11 classes of services for which a trademark can be registered.

In general, trademarks must be distinctive in order to be registered. In some countries such as the UK, however, it may be possible to register a non-distinct mark, provided that prior to the date of registration, it acquired a distinctive character as a result of its use. Distinctiveness in the US has experienced some overhaul when it comes to non traditional trademarks, whereby court rulings have found that marks in relation to sound and product packaging are capable of being inherently distinctive, whilst product design, scent, colour and taste are not. Those not inherently distinctive must therefore provide evidence of a secondary meaning, or acquired distinctiveness, in order to be registrable and protected under US courts.

Trademarks that cannot be registered usually include those which are misleading (if it uses the word 'organic' for a product that is not) or descriptive if a mark describes the goods or services to which it will relate. Furthermore, marks that contain internet domain names, aspects that are deemed offensive such as swear words or inappropriate images, as well as those similar to state symbols and other official signs, emblems subject to protection under an international agreement, abbreviations and names of international intergovernmental organizations, are not registrable in most jurisdictions.

Trademarks can vary in terms of their strength of protection, for example, a strong mark in accordance with US trademark law would be a 'fanciful or coined' mark. These marks are inherently distinctive as they constitute invented or sometimes archaic words that bear little, or no, resemblance to the goods or services provided, such as 'Pepsi'. Another type of strong trademark is the arbitrary mark, consisting of words or symbols that have common meaning in the jurisdiction of registration, but are unrelated to the good or service, such as ‘Apple’ for computers. Weaker marks include suggestive marks such as 'Netflix', which make some reference to the subject matter of the mark.

Please note that the aforementioned examples of trademark requirements and strength of protection are largely based on UK and US law, and will differ in each jurisdiction. For more information on trademark registration, please contact us.