Ready or Not? Picking Between Intent to Use and Use in Commerce for Trademarks

Quick Overview

When filing a U.S. trademark application, you’ll encounter two filing options: Intent to Use (ITU) and Use in Commerce (UC). These options reflect your current relationship with the mark. ITU applies if you haven’t used the mark but plan to, while UC requires proof you’re already using it in business. Knowing the difference can save time, money, and headaches in the registration process.

Common Questions & Answers

1. What is an Intent to Use trademark application?
   An ITU filing indicates that you plan to use your trademark in the future but haven’t yet started. It essentially “reserves” your rights to the mark while you finalize plans to launch.

2. What qualifies as Use in Commerce?
   Use in Commerce means the trademark is already in active use in selling goods or services across state or national borders. Proof, like invoices or product photos, is required.

3. Can I switch between ITU and UC during the application process?
   Yes! An ITU application can be converted to UC if you start using the mark before final registration. However, you can’t file UC and then switch to ITU.

4. What are the extra costs with an ITU application?
   ITU filings require an additional fee and a “Statement of Use” submission later, so they can be slightly more expensive overall.

5. What happens if I file ITU but never use the trademark?
   If you fail to demonstrate use, the application will be abandoned, and you’ll lose your rights to the mark.

Step-by-Step Guide

1. Evaluate Your Trademark Status
   Are you actively using the trademark to sell goods or services? If yes, file under Use in Commerce. If not, an ITU might be the right option.

2. Choose Your Filing Basis
   For ITU, prepare to provide a reasonable timeline for when the mark will be used. For UC, gather evidence of current use, such as photos, websites, or invoices.

3. File the Application
   Submit your application to the USPTO, paying attention to whether you’re filing ITU or UC. You’ll need to describe the goods or services associated with the trademark.

4. Monitor Your Application
   If you filed ITU, you’ll need to submit a Statement of Use later. For UC, ensure your documentation satisfies USPTO’s standards.

5. Get Approval and Registration
   After examination and approval, your mark will be registered—congratulations! For ITU, registration only happens after you submit proof of use.

For a customized trademark strategy, schedule a consultation with Devin Miller to navigate the process seamlessly.

Historical Context

The distinction between ITU and UC filing stems from the U.S. Trademark Act of 1946, also known as the Lanham Act. Before this, businesses had to prove usage to register a trademark. The ITU option was introduced to accommodate companies with new ideas or expansion plans but no immediate sales.

This amendment was a game-changer for startups and businesses launching new products, as it provided a way to secure trademark rights before incurring production costs. Today, ITU allows brands to protect their intellectual property even if the product or service hasn’t hit the market yet. It reflects the dynamic nature of modern commerce, enabling entrepreneurs to establish ownership early in the process.

Business Competition Examples

1. Apple’s “iWatch” ITU Filing
   Before the launch of the Apple Watch, Apple filed for trademarks under ITU for “iWatch.” This protected the name even though the product was eventually branded differently.

2. Nike’s “Air Zoom Mercurial” Campaign
   Nike often files ITU applications for upcoming shoe lines, allowing them to secure names before public release. This minimizes the risk of name theft.

3. Amazon’s “Prime Air” Trademark
   Amazon filed an ITU application for “Prime Air,” their drone delivery service, years before drones became a reality. It safeguarded their future branding.

4. Coca-Cola’s Limited-Edition Products
   Coca-Cola uses ITU filings to protect names of special-edition drinks before they’re launched, ensuring competitors can’t capitalize on their ideas.

Discussion

Choosing between ITU and UC can significantly impact your trademark journey. While ITU provides a forward-thinking approach, it also involves additional paperwork, fees, and deadlines. On the other hand, UC is simpler if your mark is already in use, but you must have solid proof to avoid rejection.

Strategically, ITU works well for startups and businesses still in the planning phase, especially if you anticipate competitors trying to snag similar names. However, it’s not without risks; failure to demonstrate timely use could mean starting over. UC offers immediate protection but is only viable if you’ve already launched your product or service.

This choice depends on your business stage, marketing plans, and how urgently you need protection. Consider consulting a trademark expert to make the best decision for your brand.

The Debate

• Pro ITU
  Filing ITU is ideal for businesses in the planning stages. It gives you a head start on securing rights while working on your product or service.

• Pro UC
  Filing UC eliminates extra steps, saves costs, and avoids the risk of non-use. It’s perfect for established businesses ready to protect their trademarks.

Takeaways

1. ITU is best for reserving rights when your product or service isn’t ready to launch yet.
2. UC is more straightforward but requires proof of active use in commerce.
3. ITU filings involve extra costs and deadlines, while UC is less complex.
4. The choice depends on your business readiness and long-term plans.
5. Consulting an expert ensures you don’t waste money or lose your trademark rights.

Potential Business Hazards

1. Missed Deadlines
   Failing to submit a Statement of Use for ITU filings can result in losing your application and associated costs.

2. Improper Evidence for UC
   Weak or incomplete documentation of Use in Commerce can lead to rejections and delays.

3. Unnecessary ITU Fees
   Filing ITU when your mark is already in use adds unnecessary costs and steps.

4. Abandonment Risks
   Delayed use of an ITU trademark can result in abandonment, leaving your brand unprotected.

Myths and Misconceptions

1. “You can file UC without proof of use.”
   False. UC filings require solid documentation of use in commerce.

2. “ITU gives permanent protection without use.”
   Not true. ITU is temporary—you must submit proof of use to secure full registration.

3. “ITU is only for big companies.”
   Small businesses and startups can benefit greatly from ITU filings when launching a new product or service.

4. “Filing ITU first ensures no one can oppose my mark.”
   Filing ITU protects your place in line, but your application can still face opposition during review.

Book & Podcast Recommendations

1. "Building a StoryBrand" by Donald Miller
   This book explains how to craft a brand identity that stands out—critical for any trademark journey.

2. "Trademark: Legal Care for Your Business & Product Name" by Nolo
   A step-by-step guide to understanding trademark law and applications in the U.S.

3. "Masters of Scale" Podcast by Reid Hoffman
   Hear from entrepreneurs on how trademarks and branding have impacted their growth strategies.

4. "IP Fridays" Podcast
   A podcast dedicated to intellectual property discussions, including trademark tips.

Legal Cases

1. Zara Foodstuff Industries v. Zara Fashion
   A dispute over the use of “Zara” highlights the importance of filing trademarks early to avoid conflicts.

2. Intel Corporation v. Intelsat Corporation
   This case showed how ITU can secure rights before launch and help brands defend their marks.

3. Amazon.com, Inc. v. Smiledirectclub
   Amazon’s ITU filing for new services demonstrates how ITU filings protect innovation plans.

Share Your Expertise

Looking for guidance on filing your trademark? Visit Miller IP Law for expert advice tailored to your business.

Wrap Up

Choosing between Intent to Use and Use in Commerce is a critical step in securing your trademark. ITU lets you plan ahead, while UC locks in protection for active marks. Make the right choice for your business goals and protect your brand’s future!