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Can you get a Trademark for a New Product or Service if it is not Yet in Use? What Entrepreneurs Should Know About Filing an Intent-To-Use Trademark Application.

Posted by Dragan Dan Ivetić | Apr 10, 2024 | 0 Comments


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Protect your brand's trademarks for products still in development!

Can you get a Trademark for a New Product or Service if it is not Yet in Use? What Entrepreneurs Should Know About Filing an Intent-To-Use Trademark Application.

Starting a business can be an exhilarating and complex endeavor. Among the myriad of decisions and actions required to bring your vision to life is the pivotal step of protecting your brand identity. One critical component of this is filing a trademark application with the United States Patent and Trademark Office (USPTO) and hopefully attaining a trademark. For entrepreneurs who are gearing up to launch a new product or service but aren't quite ready to enter the marketplace, an Intent-to-Use (ITU) trademark application could be the valuable edge they need to cement their rights.  You see, though trademarks are based on use in commerce (at least in the US), the Lantham Act permits applicants to apply on an "intent-to-use" basis if they have a good faith, bona fide intent to use that trademark in commerce.

At our law firm, we understand the intricacies of trademark law and the importance of securing your brand's future. This blog post aims to guide small business owners and start-up entrepreneurs through the process of filing an ITU trademark application, explaining its advantages, and providing insight into the subsequent steps involved once your application is on file.

Understanding the Intent-To-Use Trademark Application

An ITU application is an assertion made to the USPTO that you have a bona fide intention to use the trademark in commerce in the near future. This application is particularly useful for businesses that are in the developmental stage of their products or services and want to secure trademark rights as early as possible.

Benefits of Filing an ITU Application

  • Establishing an Early Priority Date: Your filing date serves as the constructive first use date of the mark in commerce, potentially putting you ahead of other applicants.
  • Legal Protection: An ITU application reserves your right to the trademark while allowing you more time to develop your offering.
  • Market Strategy: You can align your trademark protection strategy with your product launch and marketing initiatives.

The Path to Registration: After Filing the ITU Application

Once you submit your ITU trademark application and it's approved, there are essential steps ahead:

  1. Notice of Allowance (NOA): If the USPTO approves your ITU application, you'll receive a Notice of Allowance. This means that your intended trademark has been allowed, but not yet registered. The NOA triggers the need for you to show that you're using the mark in commerce.
  2. Statement of Use (SOU): Within six months of receiving the NOA, you must submit a SOU. In this, you'll need to provide a specimen showing how the trademark is used in commerce. This might include samples of the trademark on product packaging, labels, or advertising. There will also be an additional filing fee at the time you file your SOU.
  3. Extension of Time to File a Statement of Use: If you can't use the trademark in commerce within the initial six months, you can request a six-month extension. You can make these requests up to five times, totaling 36 months, provided that you continue to demonstrate ongoing efforts to use the trademark commercially.
  4. Final Registration: When a proper Statement of Use has been filed and accepted by the USPTO, your trademark will proceed to registration, securing the rights and protections that come with a registered U.S. trademark.

Should You Go the ITU Route?

Filing an ITU is a strategic move that may benefit many entrepreneurs. Nonetheless, it's important to weigh the filing costs against the clear pathway it provides for securing trademark rights before market introduction. For those who value the early claim to their marks and who have concrete plans to use them, ITU applications often prove to be a savvy business decision. It's important to keep in mind, however, that the ITU option is only available for marks that meet certain requirements.

Additionally, it's recommended to consult with a trademark attorney or other qualified legal professional before deciding on whether to file an ITU application. They can provide guidance on the best course of action based on your specific business needs and goals.

However, it's important to be aware of the Statement of Use requirements and the associated deadlines, as failure to meet these could result in the abandonment of your application. Consulting with a trademark attorney can help ensure that all requirements are understood and met efficiently.


Remember: A solid trademark strategy is integral to protecting and empowering your brand. Whether you are just starting or already knee-deep in product development, consider if an ITU trademark application aligns with your overall business plans. Feel free to contact our law firm for personalized assistance and leverage our expertise to fortify your brand's future. With our team at your side, you can focus on building your business while we handle the legal details. Protect what's yours and set yourself up for success with a registered trademark through an Intent-to-Use application. So why wait? Get started today!


Additional Tips for Trademark Registration

In addition to considering an ITU application, there are other key factors to keep in mind when it comes to trademark registration. We've compiled a list of tips to help you navigate the process and ensure your brand is protected.

  1. Conduct a thorough trademark search: Before submitting a trademark application, it's important to conduct a comprehensive search to ensure that your chosen mark is not already in use by another company or individual. This will help to avoid potential conflicts and legal issues in the future.
  2. Choose a strong mark: When selecting a trademark, it's important to choose something that is unique, distinctive, and memorable. This will not only help with brand recognition, but also increase the chances of your mark being approved for registration.
  3. Understand the classes of goods and services: Trademarks are registered under specific classes of goods and services, so it's important to understand which class(es) your mark falls under. This will determine the scope of protection for your mark.
  4. Keep track of renewal dates: Registered trademarks must be renewed periodically in order to maintain protection. Make sure to keep track of these renewal dates and submit the necessary paperwork on time.
  5. Consider international registration: Each country has their own trademark registry and rules.  So, if you plan on using your trademark in multiple countries, it may be beneficial to pursue international registration. This will protect your mark in other countries and can help prevent infringement.
  6. Consult with a lawyer: Trademark law can be complex, and navigating the registration process alone can be intimidating and confusing. One simple technicality or mistake could mean that your trademark is abandoned or unsuccessful.  Consider consulting with a lawyer who specializes in Trademark law to ensure that the process goes smoothly and your mark is properly protected.
  7. Monitor for potential infringement: After your trademark is registered, it's important to regularly monitor for potential infringement. If you discover someone is using a similar mark, it may be necessary to take legal action to protect your rights.
  8. Educate yourself on trademark law: It's important for business owners to have a basic understanding of trademark law in order to protect their brand. Take the time to educate yourself on the different types of trademarks, registration requirements, and infringement laws.
  9. Use your trademark consistently: To maintain protection for your trademark, it's important to use it consistently as it is registered. This means using it on all relevant products, packaging, and marketing materials.
  10. Consider international protection: If you plan on expanding your business globally, it's important to also consider protecting your trademarks in other countries. While trademark laws and regulations may vary from country to country, it's important to understand the process for obtaining trademark protection in different jurisdictions. Additionally, you may want to consider registering your trademarks with international organizations such as the World Intellectual Property Organization (WIPO) to streamline the registration process in multiple countries.

Conclusion: In conclusion, trademarks are a valuable asset for any business or brand, providing legal protection and helping to establish a unique identity in the marketplace. By understanding the importance of trademarks and taking the necessary steps to protect them, businesses can safeguard their brand and maintain a strong presence in their industry. So, businesses must prioritize trademark protection as part of their overall strategy for success. With ongoing review and management, businesses can ensure that their trademarks continue to serve as a valuable asset and help them stand out in the competitive market. Additionally, with the rise of digital technology and global expansion, businesses must also consider protecting their trademarks online and internationally. Ultimately, investing in trademark protection is a wise decision for any business looking to secure its brand's identity and reputation. So, whether you are a small startup or an established corporation, don't underestimate the importance of trademarks and their role in your overall business strategy. Make sure to consult with a legal professional for guidance and support in protecting your trademarks and maintaining their validity over time. With proper trademark protection, you can confidently build and grow your brand while mitigating potential risks and challenges along the way.

So, don't delay any longer - start prioritizing trademark protection for your business today and reap the benefits for years to come. Remember, your trademarks are not just a symbol or name - they represent your business and all that it stands for. So, protect them with care and watch your brand thrive in the marketplace. Thank you for reading this blog on trademark protection. We hope it has provided valuable insights and information that will help you navigate this important aspect of business ownership. Keep learning, keep innovating, and keep protecting your trademarks! Happy branding! #TrademarkProtection #BusinessStrategy

For more information, contact our office for a free trademark consultation!

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About the Author

Dragan Dan Ivetić

DRAGAN DAN IVETIĆ was born and raised in the Chicago suburbs, and wanted to become an attorney to help people from a young age.  He received a bachelor's d...


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