Intent to use (ITU) trademark applications

Many individuals think that you must be using a mark in order to file a federal trademark application. The United States Patent and Trademark Office (USPTO) allows applicants to file "intent to use" (also called ITU, intent-to-use, Section 1(b) or § 1(b)) applications. This is a trademark application that is filed before you actually start using the mark in commerce.

According to the USPTO, an intent to use trademark application can be filed if:

... actual use of the mark in commerce that the U.S. Congress can regulate (i.e., interstate commerce, territorial commerce, or commerce between the United States and a foreign country) has not yet occurred, but instead there is simply a bona fide (good faith) intention to use the mark in commerce at a later time after filing of this application. The intention to use may be by the applicant, the applicant's related company, or the licensee of the applicant.

Before the USPTO allows an ITU trademark application to proceed to registration, you will have to file a Statement of Use (also called an Amendment to Allege Use.) This will have to be filed within 6 months of receiving a Notice of Allowance from the USPTO. If you are not using the mark when you receive the Notice of Allowance, you can apply for extensions to file your Statement of Use, for up to 36 months from the date of the Notice of Allowance. These extensions have to be filed every 6 months, require payment of a fee, and after the first extension, require a showing that the applicant is endeavoring to begin use of the mark in commerce.

Even if you are using the mark in commerce, it is sometimes recommended to file an ITU trademark application. Reasons include plans to modify or expand your mark to different goods or services, and a need to file the trademark application as soon as possible. If you file a use based trademark application, you need to submit sufficient proof that you are using the mark in commerce. Filing an intent to use (1b) trademark application allows you to defer filing proof of your use until a later date. There are additional fees associated with filing later proof of use via a Statement of Use or Amendment to Allege Use.

To prepare and file a basic trademark application, including consultation with an attorney, our firm charges $400 (plus USPTO filing fee of $325).

To contact us, fill out the form on this page, call us at 858-350-3124 (San Diego) or toll free at 800-361-1961.

For additional trademark information resources, please visit our trademark resources page.