{5 minutes to read} When you file a trademark application in the US, you must include a basis for the filing. Two of the more popular bases are (1) current use in commerce; and (2) an “intent to use” the mark in commerce in the future. The “intent to use” (ITU) application can be an important tool for protecting a company’s intellectual property.
Oftentimes a company develops the name of a product or service well before it’s ready to launch that product or service. An ITU saves a company’s place in line in the trademark office, blocking third parties who subsequently apply to register a confusingly similar trademark. However, there are pitfalls unique to this type of trademark filing of which trademark owners should be aware.
1. Changes in Ownership
If this is done incorrectly, the resulting trademark registration could have no more value than the piece of paper it is printed on.
One of the requirements of an ITU application is that the owner must file evidence of use in the form of a statement of use or amendment to allege use before a registration will issue. The trademark office generally doesn’t permit applicants to transfer ownership of the ITU application until the applicant completes this filing. (There are a small number of exceptions to this rule.)
Where this oftentimes comes up is when a company seeks to transfer ownership to a related entity. For example, a company files an application in the name of a subsidiary and later decides it wants to transfer ownership to the parent or a sister company.
Or, a company creates a new unrelated entity after filing the ITU application for tax or liability reasons and wants to transfer its intellectual property to this new entity. If the ITU application is transferred incorrectly, the trademark registration may still issue, but the registration would be vulnerable to attack on the basis that the applicant committed fraud on the trademark office. (The trademark office doesn’t review transfers to determine whether they’re valid, except at a very high level.)
In the event of a dispute with a third party, you do not want to be in the position of relying on a vulnerable trademark registration to protect your trademark rights.
2. Changes to the Depiction of the Trademark
This applies to all trademark applications but is more common in ITU applications because they are often filed during the “idea” stage of a product or service launch.
Once you file a trademark application, you cannot make material changes to the trademark. When it comes time to submit evidence that you’re using the trademark, if the trademark shown in that evidence isn’t identical to the trademark in your application, the allegation of use will be rejected. Oftentimes this can’t be corrected, except by starting from scratch with a new trademark application.
3. Additional Goods and Services
Similar to issue 2 above, once you file a trademark application, you can’t revise the application to include additional products or services. When filing an ITU, carefully consider your plans for the mark, including plans for expansion. A trademark attorney can help guide you in crafting an appropriate goods/services description for your ITU application.
The best practice is to think through these issues carefully before you file an ITU application. If you do come across a situation where you have to make changes to your ITU application, speak with a trademark professional before doing so.
If you would like additional information on this topic, please contact us at info@trademark-counsel.com or call 212-360-2307.
Kelly Weiner
Trademark Counsel
Law Office of Kelly Weiner PLLC
175 Varick Street, Fl 6
New York, New York 10014
(E) info@kellyweinerlaw.com
(P) 212.360.2307