Enforceable trademark rights are conferred on a trademark once it is being used as a source indicator in commerce in connection with goods and/or services. These rights can stem from common law usage, which is use in commerce without a federal registration, as well as from a federal registration.
If an applicant for a federal registration has a good faith intention to use a mark, filing an Intent-to-Use (“ITU”) application is an option that can secure several benefits before the applicant has begun using the mark in commerce. First, the ITU applicant will secure a filing date; any subsequent trademark applications filed with the USPTO for the same or confusingly similar trademark will have the ITU applicant’s mark cited against them. Second, filing an ITU application constitutes constructive use of the applied-for trademark provided the application proceeds to registration. This means that upon registration, the filing confers nationwide priority over others based on the filing date of the ITU application, except:
(1) parties who used the mark before the applicant’s filing date;
(2) parties who filed in the USPTO before the applicant; or
(3) parties who are entitled to an earlier priority filing date based on the filing of certain foreign applications.
The timeline for an ITU application generally follows these steps:
- Filing
- Prosecution
- Publication
- Notice of Allowance
- Statement of Use
- Registration
In order for an ITU application to advance to registration, an applicant must demonstrate to the USPTO that the applicant is using in the mark in commerce.
There are two procedures available to show use: (1) an Amendment to Allege Use (“AAU”), which can be filed after the ITU application is filed but before the mark is approved for publication; and (2) a Statement of use, which must be filed if no AAU is filed, within six months of the notice of allowance. The applicant will have six months after the application is allowed to file a Statement of Use; there are five six-month extensions of time to file the Statement of Use after the initial six-month period, meaning that an ITU application is a useful tool when use of a mark is likely to occur within about three years of the ITU application filing.
As part of both the AAU and Statement of Use, a specimen showing the mark being used in commerce must be filed. A photograph of tags or packaging bearing a trademark as used in commerce are examples of specimens for goods; a website screenshot showing the mark being used to advertise services being rendered in commerce is an example of a specimen for services.
But what happens if the USPTO refuses the specimen submitted? A specimen will be refused if it does not meet all requirements for showing use of the mark in commerce on or in connection with the goods, or in the sale or advertising of the services.
If the refused specimen was submitted with an AAU, the applicant may submit an acceptable substitute specimen that was in use before the filing of the AAU, or withdraw the AAU before the mark is approved for publication. In the case of the latter, the application will be amended back to an ITU basis and the applicant can submit a Statement of Use with an acceptable specimen once the application is allowed.
Once a Statement of Use has been filed, it cannot be withdrawn. In other words, the applicant cannot amend the application back to an ITU basis. If the applicant’s specimen submitted with the Statement of Use is refused by the USPTO, the applicant must file an acceptable substitute specimen that was in use before the deadline for filing the statement of use, or appeal the refusal.
As an example, Applicant X receives a Notice of Allowance on its ITU application for trademark “ABC” on January 1. Applicant X now has six months to file a Statement of Use (or file for an extension); the deadline will be July 1. Applicant X files a Statement of Use on July 1 and does not file for an extension. If the specimen is refused, Applicant X will need to submit a substitute specimen that was in use before the July 1 deadline, or file an appeal. This means that if Applicant X makes changes to its website for example on July 6 in order to address the reasons for the specimen refusal, a substitute specimen cannot be submitted based on those changes because the substitute specimen was not in use before the July 1 deadline.
If a Statement of Use has been filed but the applicant does not have an acceptable specimen or substitute specimen that meets the timing requirements, the applicant will need to file a new application and will lose the priority date for the refused ITU application. Ensuring that a specimen meets the requirements for showing use of the applied-for mark in commerce is important to avoiding the situation in which an ITU application cannot advance to registration because an applicant does not have an acceptable specimen.
