When Must I Prove Actual Use in a Trademark Registration Application?


Detroit Trademark Attorneys: Alleging Actual Use in Commerce in Intent-to-Use Trademark Applications

When you apply to register a trademark with the US Patent and Trademark Office (USPTO), you have, initially, 2 options:

  1. An “in use” application, in which you are alleging that your trademark is already “in use” in interstate commerce (i.e., being sold across state lines);
  2. An “intent to use” application, in which you are claiming that your trademark will soon be in use in interest commerce—but isn’t quite yet. 

Why is this important? 

It is an important distinction because Federal trademark registration is available only to trademarks identifying the source of goods or services being sold in interstate commerce. 

If your good or service is only being marketed and sold within your state, it is not eligible for Federal registration. 

What Is the Timeline for an Intent-to-Use Application? 

The initial application process is the same as for an In Use application: 

The Application is filed on Day 1. 

3 months later, the USPTO assigns an Attorney Examiner to your Application. This examiner will review the Application and either allow it through to Publication (see below) or file 1 or more “Office Action” refusals of the Application. 

These Office Actions may be “administrative” (revise your disclaimer or description slightly or fix the owner’s information, etc.), or they may be more weighty and “substantive,” such as a refusal on the basis that your proposed trademark, if allowed, would be likely to confuse consumers as to the source of someone else’s already-registered trademark. 

If there are no refusals, or you resolve them, the Application will then proceed to “publication.” 

This is a 30-day period of time in which your Application is reviewable by third parties who may, if they feel there is a likelihood of confusion, also oppose its approval. 

However, once the Application passes through this period, if it is not opposed, the Application will be approved for registration

With an In Use Application, this is the final step. The certificate of registration is then mailed to your Trademark Attorney, who will then provide it to you and advise you as the next five years slide by, of maintenance and renewal requirements

However, with an In Use Application, you already provided to the USPTO with the initial Application a “specimen,” or example evidencing the use of the trademark on a product or service identifying it consumers in interstate commerce. 

With an Intent-to-Use Application, this is not the case. 

How Does the Process Differ with an Intent-to-Use Application? 

With an Intent-to-Use Application, you undertake this same process—but, instead of a registration certificate being issued at the end, something called a Notice of Allowance (NOA) is issued instead. 

This NOA is your trademark approval, pending your provision of evidence to the USPTO that your trademark is now, at least, being used in interstate commerce.

This provision must now be accompanied by a specimen. 

How Long Do I Have to Prove Use After my Trademark Is Approved? 

You have 6 months from the date of the issuance of the NOA to prove actual use by filing a Statement of Use with your specimen. 

You may request an extension of this deadline up to 5 times before the Application and the trademark will be deemed Abandoned by the USPTO. 

However, each subsequent request for extension after the first must include an explanation why the request is being filed in good faith. 

Note that it is possible to prove actual use prior to the issuance of the NOA (if your product or service launches sooner than anticipated!) by filing an amendment of the initial application. 

Detroit Trademark Attorneys: Proving Actual Use in Intent-to-Use Applications – The Bottom Line

The bottom line with the filing of an Intent-to-Use Application is that you need to consult a knowledgeable trademark registration attorney before investing time, money, and your brand into an application process to maximize your odds of success—and to meet all required deadlines.

Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting enterprises in every industry with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.

We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.

Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.


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