A competitor interested in knocking out your trademark application could very well succeed, if you are not maintaining the appropriate documents. This assumes that the applicant puts the mark into actual use and completes the application process within six months. Thus, the applicant is able to secure an earlier filing date and therefore priority over future applicants who attempt to register the same or a similar mark. What if you plan to invest heavily into marketing and advertising and want more confidence in your freedom to secure and use the proposed trademark? An actual use application is filed by an applicant who is actively using their trademark in the marketplace. For more details, read about the complete. The fees are about the same for an actual use and intent to use application. Materials available on or through this web site or in our newsletter are for informational purposes only, are expressly not for the purpose of legal advice, and do not create an attorney-client relationship.
If you need more time, you can file an extension request. This allows your mark to enjoy an earlier priority date, if your mark is challenged by someone who claims to have used the trademark before you launched your brand. Enter your best email address to the right to join our newsletter. For trademarks already in use, already exist as to the geographic territory of use. The Section 1 b Intent to Use Application also has extra costs associated with it. When Is an Intent to Use Trademark Application Made? It may use common words in a common way or it may literally describe your product. Therefore, the question is whether you are using your mark in commerce.
If you have questions concerning priority of use in connection with a trademark, please free to our office for a courtesy consultation with one of our trademark attorneys. This is the only service I've ever reviewed because I honestly believe he's one of the best. Then this is the right application for you. The applicant must submit a Statement of Use with specimen within 6 months of the Notice of Allowance, or request a six-month extension of time. Be ready to produce business plans, business meeting minutes, marketing plans, correspondence with suppliers and distributors, focus group testing, permits, licenses, etc. And, you need to show objective evidence of your intention to use. Companies that are not confident about filing an Amendment to Allege Use or a Statement of Use application within six months should seek professional advice before proceeding.
This procedure also makes it easier to avoid infringement. While this difference between the the two bases may seem slight, it has significant effects upon the rights of the trademark applicant. But Josh's system worked, and we were awarded both trademarks. This gives the business plenty of time to shore up its product design, marketing campaign and distribution channels. So, while an intent-to-use application doesn't provide the present benefits of an actual-use registration application, it can prove quite beneficial if a registration is subsequently issued and another party begins to use the mark after the intent-to-use application is filed but before the registration is issued. Topics: , , , ,.
As a result, the application from the Minnesotan entity was rejected. Common ownership or control alone is not sufficient to meet the standards for a valid assignment. If you have a great idea for a name, and are already moving forward with plans to launch it into commerce, then the intent to use application can be a great option. However, a Texas business called Blast Blow Dry Bar had filed a use-based trademark application on December 8, 2011 — just two days earlier! The only difference is that with the intent to use application, you will also need to file a statement of use and pay a fee once you actually put the mark in commerce. It is often difficult to identify common law trademark uses because, by their very nature, they are not listed within the United States Patent and Trademark Office database. Applicants who file intent-to-use trademark applications will begin enjoying the benefits of trademark protection and receive nationwide priority surrounding their trademark or service mark before individuals who opt out of applying for an intent-to-use status.
If a company is not 100 percent sure about wanting to use the mark, it is not recommended to file an application. Not documenting the intended use and the registration of the mark can have serious legal consequences. I know I can just give him a call and it'll be done quickly, affordable, and done right. An allegation of use can be filed one of two ways through either an amendment to allege use or a statement of use. Deciding what kind of application to file is just one piece of the puzzle.
An intent to use application allows an applicant to select a name, file for trademark registration, and, if the mark is deemed merely descriptive or generic, the applicant can abandon the application and adopt another mark without much risk. One of the requirements of a Section 1 a Actual Use Application is that you must file with it a specimen of use. Benefit 2: Put Others on Public Notice of Your Trademark and Deterrent Effect Sometimes making your presence known to competitors and third-parties is half the battle. Consult with an before filing an application. It usually takes around 12 weeks from the date of submission of an Amendment to Allege Use or a Statement of Use. If the examiner approves the mark for publication, then the company must wait until a Notice of Allowance, also called a Statement of Use, is issued after the publication period ends without opposition from third parties.
If so, you may be able to file an actual use application. It is one of the most popular independent small business publications on the web. Always seek the advice of a competent professional when making important financial and legal decisions. He is thorough, quick, extremely fairly priced and, most important, professional on the highest order. This is important because once use of a trademark occurs, this can open up a person or business to trademark infringement liability.
This status and indication of intent is regulated by §1 b of the Trademark Act, 15 U. Testimonials reflect results achieved on behalf of one client, which does not necessarily reflect that similar results will be obtained for other clients. It stated that because Central wholly owned Pennington Seed, and Pennington Seed owned all of the stock in All-Glass, the application belonged to Central all along. The information on these pages should not be considered as legal advice. In most cases, there are two types of trademark applications available to an applicant seeking trademark registration — a Section 1 a Actual Use Application or a Section 1 b Intent to Use Application. The United States Patent and Trademark Office often requests samples and product images that the company wants to use the mark for, and failing to provide these will result in the rejection of the application. You can purchase the domain name now, but what about federal protection? Contact your local trademark attorney or to help you get your trademark protected.