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Authors: Bharati Bakshani, Dennis S. Prahl, Matthew D. Asbell, Sebastian Lovera Riso | Categories: | Tags: , , ,

Allegations of Use in U.S. Trademark Applications Based on Intent to Use

“Intent to use” (“ITU”) trademark applications must be successfully amended to allege use in U.S. Commerce before proceeding to registration. The applicant has six months from the issuance of a Notice of Allowance (“NOA”) or any extension thereof to commence use in U.S. Commerce and submit a Statement of Use (“SOU”) or file a request for an extension of time to commence use (“RFE”).1

The appropriate step depends on whether the applicant (or its licensee(s)):

  • has commenced use on all of the applied-for goods/services;
  • has not commenced use on any of the applied-for goods/services; or
  • has commenced use on only some of the applied-for goods/services.

The sections below address each of these circumstances separately.

  1. * An alternative, if applicable, is to complete the process of amending to a foreign application or registration basis, thereby circumventing the pre-registration use requirement. ↩
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+ Use on All Applied-For Goods/Services

Where the applicant has commenced use of the mark in U.S. Commerce on all of the goods/services identified in the NOA, the applicant may submit an SOU if it can meet the following requirements:

  1. Specimen(s): The applicant must provide at least one acceptable sample(s) showing use of the mark for each class of goods/services covered by the NOA.
    • A proper use specimen for goods (Classes 1-34) must show the mark affixed on the outside of the goods or packaging or on a point of sale display associated with the goods.
    • A proper use specimen for services (Classes 35-45) must show the mark used in the sale of the applied-for services, which includes use in the course of rendering the services, or in advertising the services.
  2. Identification of covered goods/services: The applicant must confirm that the SOU is intended to cover all of the applied-for goods/services in the NOA.1
  3. Dates of First Use: The applicant must indicate the date of first use in U.S. Commerce, and the date of first use anywhere in the world, if earlier.2
  4. Oath and Signature: The applicant or a properly authorized person must sign an oath swearing under penalty of perjury that the mark is used in U.S. Commerce, in relation to all of the goods and services listed in the SOU as of the date of its filing.3
  5. Fee: Official Fees of $100 per class must be paid.
  1.  See section entitled “Use on Some of the Applied-For Goods/Services” if the mark is used on only some of the applied-for goods and services. ↩
  2.  The applicant may provide dates (or just a month and year) reasonably estimated to be contemporaneous or subsequent to (but not earlier than) the actual dates of first use. ↩
  3. The USPTO will generally rely on the sworn attestation that the mark is in use in the United States as of the date submitted. ↩

+ Non-Use on Any of the Applied-For Goods/Services:

Where the applicant has not commenced use of the mark in U.S. Commerce on any of the goods/services identified in the NOA or the applicant’s evidence of use is insufficient, the applicant may file an RFE1, if it can meet the following requirements:

  1. Verification and signature: The applicant must provide a written extension request signed by the applicant or a properly authorized person to verify that the applicant has a continued bona fide intention to use the mark in U.S. commerce.
  2. Good cause: The applicant may request a first extension without good cause. Second or subsequent extension requests must include statements of the applicant’s good cause for not having commenced use. The applicant may select from the following typical reasons or provide a written explanation:2
    • “product or service research or development”
    • “market research”
    • “manufacturing activities”
    • “promotional activities”
    • “steps to acquire distributors”
    • “steps to obtain required governmental approval”
    • “efforts to secure funding”.
  3. Fee: Official Fees of $150 per class must be paid.
  1. The applicant may obtain up to five 6-month extensions (up to 3 years from the date of the NOA). ↩
  2.  Good cause does not include physical illness or disability and lack of staff and resources due to economic downturn. ↩

+ Use on Some of the Applied-For Goods/Services

Where the applicant has commenced use in U.S. Commerce on only some of the goods/services identified in the application, the applicant may either:

  1. File an RFE for all of the identified goods/services if the applicant can meet the following requirements (outlined in an earlier section, entitled “Non-Use on Any of the Applied-For Goods/Services”):
    • Verification and signature
    • Good cause for a second or subsequent extension requests
    • Fee
  2. File an SOU for the goods/services in use and delete the unused goods/services if the applicant can meet the following requirements (outlined in an earlier section, entitled “Use on All Applied-For Goods/Services”):
    • Specimen(s)
    • Identification of covered goods/services
    • Dates of First Use
    • Oath and Signature
    • Fee
  3. Divide the application, file an SOU for the goods/services in use, and file an RFE for the remaining unused goods/services, meeting all of the requirements outlined in paragraphs a) and b) above.  Successfully doing so should eventually result in two or more separate registrations for the same mark covering different goods/services.