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Can I register my trademark before I start using it?

Gearing up to launch a good or service, but not using it yet? Consider the pros and cons of an Intent to Use application before registering your trademark.




You came here looking for answers, so let’s cut to the chase:



You can file an Intent to Use trademark application before you actually start using your trademark, as long as certain criteria are met.



First...

With your application, you must submit a signed affidavit explaining that you have a bona fide intent to use your trademark in commerce—which means using the mark in the ordinary the course of trade.



Then...

Before you can register your trademark you will need to submit proof of use of your mark in commerce. You can do this at three different times:


  • Before your application is approved

  • Within six months of when your Notice of Allowance is issued

  • During a time-extension period after your Notice of Allowance is issued


So, is filing an Intent to Use the way to go? Let’s take a look at some pros and cons of filing an Intent to Use application first, before an actual use-based application.



Pros of Intent to Use Application


  • You may establish an earlier application date than a competitor, which could be beneficial in the event of a future legal dispute.

  • The above reason may give you some peace of mind while you work on getting your trademark into actual use to file for registration.

  • If your mark is not very distinct, you may not be able to successfully register it until you can demonstrate that the public associates your trademark with your good or service. In the meantime, a Notice of Allowance is better than no protection at all.

  • If you’ve invested a lot in your trademark and will invest even more money as you get ready to launch your good or service into the market, having a Notice of Allowance could at least give you that filing date if you have a dispute with a competitor and puts others on notice of your intent to use the trademark.



Cons of Intent to Use Application


  • The application is about $100 more expensive than a regular trademark registration application. If you need to file for an extension, you will need to pay an additional $150.

  • Your mark will not be placed on the USPTO’s Principle Register with only a Notice of Allowance.

  • This is not an alternative to registering your trademark, it’s just an initial first step you can take if your good or service is not yet in actual use in commerce.



Every situation is different and there may be compelling reasons why you might want to file an Intent to Use application for your trademark or wait until you are actually using it in commerce and file an application to register your trademark.


If you’re unsure about the best course of action for you, we are happy to chat about your brand, goals, and what the best strategy for you might be. Apply for a complimentary consultation and we can help you come up with a plan of action!


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