Actual Use Versus Intent to Use

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What is a Filing Basis? An application for a trademark or service mark must include a filing basis. The two most common filing bases are “Actual Use” and “Intent to Use,” which indicate their use in commerce.

 

What is a “Actual Use?” To apply and register for a trademark, the application must include proof that the mark has already been used. This line of thought is the opposite from acquiring a domain name where a person can buy a .com and squat on the name for years. Filing under Actual Use means you are using the trademark in interstate commerce. In fact, you will attest to having sold your goods or services outside of your home state. The application must also include proof (also known as a specimen) of the goods or services sold.

 

What is “Intent to Use?” The common question I receive is whether or not a person can reserve a trademark name before they invest money in marketing a new brand. Yes, it is possible, but there are two things to understand when taking this approach. (1) the applicant must verify that the applicant has a bona fide intention to use the mark in commerce, and (2) this type of application is time bound. Once the application is approved, the applicant has six months to then file proof of use (specimen).

 

What is the cost difference? Filing under Actual Use requires only one application: application of name AND proof of use in the SAME application. Filing under Intent to Use requires two applications: (1) application for name, then (2) proof of use in SUBSEQUENT application.

 

With the cost in mind, why would I file under “Intent to Use?” If you are not selling your goods or services, you might think it would be better to make your first interstate sale and save money by filing ONE application under the Actual Use basis. Yes, on the front end, this does seem to save money, but you bear the risk that someone else might file for that same name or similar name, which ultimately may impede you from registering your desired trademark. The primary advantage of filing under Intent to Use is to allow you to secure the name before you invest your money in marketing the new brand. Remember, this is an application and there is no guarantee the trademark will be approved for registration so this might be the best strategy for your situation.

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