Understanding the Difference Between Actual Use and Intent to Use Trademarks

When you decide to register a trademark, you have to make a key decision: Are you going to file an actual use application or an intent to use application? Key differences separate these options, and making the wrong choice could cause your application to be delayed or denied.

Each Use Defined

– An actual use application, also known as a section 1(a) application, is intended for use by companies that are already using a trademark for commercial purposes.

– The other option is a section 1(b) application, also known as an intent to use application. This type of application indicates that the trademark is not yet in commercial use but will be in use in the future.

Defining “Use”

Before you determine which box to check on your trademark application, you should understand how the US Patent and Trademark Office defines “use.” A trademark is considered already in use if the company actually uses the mark in its commercial activities, not solely for the purpose of claiming a trademark. The symbol or phrase must be used either on goods that are actively being sold or to represent services. The trademark can also be used in advertising and packaging associated with goods or services.

Deciding Which Option Fits Your Needs

When you file an actual use trademark application, you must provide proof that you are using the mark in commerce. The specimen of use shows the US Patent and Trademark Office that you are actively using the mark. If you file an intent to use application, you do not have to provide a specimen of use. However, before the US Patent and Trademark Office will issue the registration, you must demonstrate that you are actually using the trademark. This involves filing an amendment to allege use or a statement of use within a period of time set by the regulations (which can be extended). Plan on doing so as quickly as you reasonably can, as this sets the date of first use, which can assist you to prevent others from using your trademark.

What If You Don’t Put the Mark to Actual Use?

If you fail to put the trademark into use after your intent to use application, it will be considered abandoned. As an example, consider this: you file an intent to use application. Another business begins using the same mark after this application but before you put it into actual use. You begin using the trademark and the original filing is considered the date of first use, which makes you the owner of the mark. If you abandon the application and never put the trademark into actual use, the other user is the owner.

Protecting your intellectual property strengthens your brand. Learn more about registering a trademark by contacting OspreyIP and setting up an initial consultation.

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OspreyIP, PLLC

Based in Brentwood, Tennessee, OspreyIP is a law firm that operates internationally to help clients file and prosecute patent applications, secure trademark registrations, and take steps to protect their intellectual property.

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