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Doug Cook is retiring and Steve Cook has moved to an in-house counsel position. As such, we are no longer accepting new clients. Thank you.

Intent to Use Trademark Application

In the United States, there are two bases by which a party may file a trademark registration application: (1) actual use or (2) intent to use.

While this difference between the the two bases may seem slight, it has significant effects upon the rights of the trademark applicant.

Actual Use

If an actual-use registration application meets the requirements of the Trademark Act as interpreted by the United States Patent and Trademark Office (USPTO) and is not "merely descriptive", the USPTO will issue a registration on the Principal Register that, among other things: (a) creates a presumption that the registrant is exclusively entitled to use the registered mark nationwide in connection with the goods or services listed in the trademark or service mark application; (b) permits the registrant to file suit in federal court for infringements; and (c) permits the registrant to file the registered mark with U.S. Customs to prohibit the importation of infringing goods.

Intent to Use

Unlike an "actual use" registration application, an "intent-to-use" registration application confers none of the aforementioned benefits upon a trademark applicant unless the trademark applicant actually uses the mark in interstate commerce within six (6) months and files proof of such use via a "Statement of Use/Amendment to Allege Use for Intent-to-Use Application".

The main benefit of an intent-to-use application is that if a registration is subsequently issued following actual use, the applicant's date of first use relates back to the date of the intent-to-use application filing. So, while an intent-to-use application doesn't provide the present benefits of an actual-use registration application, it can prove quite beneficial if a registration is subsequently issued and another party begins to use the mark after the intent-to-use application is filed but before the registration is issued.

If an applicant does not actually use the mark in interstate commerce within the aforementioned six (6) month period, it can file extensions for up to three (3) years, subject to additional fees.

This brief overview of some important considerations associated with trademark registration is by no means comprehensive. Always seek the advice of a competent professional when making important financial and legal decisions.

Steve Cook is an attorney at Cook & Cook. Although his office is located in Mesa, Arizona, he represents clients throughout the Phoenix, Arizona Metropolitan area including the following east valley cities: Scottsdale, Paradise Valley, Tempe, Chandler, & Gilbert.

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