Should You File Your Trademark as In Use or Intent to Use?

Every federal trademark application needs a filing basis: the legal reason you are entitled to apply. Our main copyright and trademark law page covers why registration is worth having; this page covers the choice most U.S. applicants face first. The USPTO says the two most common bases are use in commerce, under Section 1(a) of the Lanham Act, and intent to use, under Section 1(b) (15 U.S.C. 1051). Three other bases serve mostly foreign applicants (37 CFR 2.34(a)). The basis decides what you file on day one, what you owe later, and how soon the mark can register.

How Choosing a Filing Basis Works, Step by Step

1. List every product and service. Write down what the mark appears on today and what it will appear on.
2. Sort them by status. Mark each item as already sold or rendered in commerce under the mark, or planned.
3. Test the items in use. For each one, confirm the date you first used the mark anywhere, the date of first use in commerce, and that you have a real specimen, such as a label, packaging or a web page with a way to buy (37 CFR 2.34(a)(1)).
4. Check your plans for the rest. For planned items, confirm you have a genuine intention to use the mark, and keep the documents that show it (37 CFR 2.34(a)(2)).
5. Choose the bases. Section 1(a) for items in use, Section 1(b) for planned items. One application can carry both, but never both for the same item (37 CFR 2.34(b)).
6. Plan the follow-up. For any Section 1(b) items, calendar the proof of use: an amendment to allege use before approval, or a statement of use after the notice of allowance. When TSDR shows a notice of allowance, our page on TSDR statuses lists the next deadline.

What Counts as Use in Commerce?

The statute defines it as "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark" (15 U.S.C. 1127). Two more requirements depend on what you sell:

• Goods: the mark is placed on the goods, their containers or displays, or their tags or labels (or, if that is impracticable, on documents tied to the goods or their sale), and the goods are sold or transported in commerce.
• Services: the mark is used or displayed in selling or advertising the services, and the services are actually rendered in commerce. Advertising a service you do not yet offer is not enough.

"Commerce" means commerce Congress can lawfully regulate: interstate, territorial, and between the United States and a foreign country (TMEP 901.03). The USPTO's plain-language version is selling or transporting goods out of state, or providing services to customers who live outside your state. Token sales do not count. The manual says the "bona fide" language was added to eliminate token use, and that "sporadic, casual, and nominal use" does not support registration (TMEP 901.02). What is ordinary varies by industry. If you are unsure whether what you have done so far is real use, the safer basis is intent to use.

What Proof Does an In-Use Application Need?

A Section 1(a) application must include a verified statement that the mark is in use in commerce, the date of first use anywhere, the date of first use in commerce, and one specimen per class showing the mark as actually used (37 CFR 2.34(a)(1); 37 CFR 2.56). A goods specimen shows the mark on the goods, packaging, labels, tags or a point-of-sale display; a services specimen shows it in selling or advertising the services.

Web pages are the most common goods specimen and the most common trap. Under TMEP 904.03(i), a web page counts as a display for goods only if it shows the goods, shows the mark with them, and gives a way to order. A page with no way to buy is "merely an advertisement," in the manual's words, and is refused for goods. Our page on what to do when a specimen is refused covers the fixes. And the timing rule is strict: you may not claim Section 1(a) for any item unless the mark was in use on it as of the filing date (TMEP 806.01(a)).

What Does a Bona Fide Intent to Use Require?

The statute allows an application by someone with "a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce" (15 U.S.C. 1051(b)(1)). The applicant signs a verified statement saying so (37 CFR 2.34(a)(2)). The USPTO's applicant guide describes it as an intention to start use within the next three to four years.

The examiner normally takes the sworn statement at face value; the manual says the USPTO will not inquire unless the record clearly shows there is no real intent (TMEP 1101). The test comes later, if someone opposes or seeks cancellation. The manual, quoting the Federal Circuit, says the bar is "not high, but more is required than 'a mere subjective belief,'" and that having no documents at all showing the intent generally proves its absence. Keep business plans, designs, supplier quotes and budgets that tie the mark to each listed item.

Why File Before You Launch?

Priority. Once a mark registers, the application's filing date counts as constructive use of the mark, a nationwide right of priority for the listed goods or services, subject to exceptions, mainly for people who used the mark first and have not abandoned it (15 U.S.C. 1057(c)). That applies to intent-to-use applications too. A business that files in March and launches in September can rely on its March date against someone who started using a similar name in June.

The filing date also governs the USPTO's queue: among conflicting pending applications, the earliest effective filing date goes first, on either basis (TMEP 1208.01; 37 CFR 2.83). Before you file on either basis, run the search described on our page about checking whether a trademark is available.

What Does Intent to Use Add in Filings and Fees?

The filing fee is the same, $350 per class. The difference comes later. Before registration, an intent-to-use applicant must file an allegation of use: either an amendment to allege use, filed any time before the examiner approves the mark for publication, or a statement of use, filed after the notice of allowance (37 CFR 2.76(a); 37 CFR 2.88). Each costs $150 per class and needs the same dates and specimen a use-based application has. Between approval and the notice of allowance is a "blackout period" when neither can be filed (TMEP 1104.03(b)).

The statement of use is due six months after the notice of allowance. The first six-month extension is granted on request, and up to four more need good cause, such as product development or manufacturing; the total cannot run past 36 months from the notice (37 CFR 2.89; 15 U.S.C. 1051(d)(2)). Each extension costs $125 per class and must restate your continued intent. Missing a deadline abandons the application (15 U.S.C. 1051(d)(4)). For a fee-by-fee budget, see our page on what a federal trademark costs, from filing to renewal. Our page on how long trademark registration takes shows the calendar.

Can You Switch Bases or Use Both?

Yes, within limits. Before publication, you may add or substitute a basis if you meet its requirements, and you may delete one at any time (37 CFR 2.35(b)(1)). If a Section 1(a) claim fails, because the specimen is unacceptable or the mark was not yet in use on the filing date, you can substitute Section 1(b) and keep the original filing date, confirming that you had a bona fide intent as of that date (TMEP 806.03(c)). Going the other way, from 1(b) to 1(a), requires an allegation of use (37 CFR 2.35(b)(8)). After publication, a change of basis needs the Director's permission on petition and republication (37 CFR 2.35(b)(2)).

One application can claim Section 1(a) for some items and 1(b) for others, in one class or several, but not both for the same item (37 CFR 2.34(b)). The catch: the use-based items wait for the intent-to-use items, and if you miss the notice of allowance deadline, the USPTO abandons the entire application, use-based items included, unless you filed a request to divide in time (TMEP 806.02(b), 806.02(d)(ii)). Dividing costs $100 for each new application created. For brands that pair an existing service with planned products, our page on trademark classes for merchandise explains how those items are grouped. For the class choice itself, see how many trademark classes you need.

Can You Sell or License an Intent-to-Use Application?

Selling is restricted. An intent-to-use application cannot be assigned before an amendment to allege use or statement of use is filed, except to a successor to the applicant's ongoing business, or the part of it the mark relates to (15 U.S.C. 1060(a)(1)). Our page on selling an intent-to-use application explains the structures that work. Licensing is different: use by a related company the applicant controls counts for the applicant (15 U.S.C. 1055), so a licensee's sales can support your statement of use if the license controls quality. See licensing a trademark that is still pending for the terms to include.

What Changes the Answer

• Use on only some items. A Section 1(a) claim must be true for every item it covers on the filing date (TMEP 806.01(a)); move the rest to 1(b) or drop them.
• Services advertised but not yet offered. Service use requires services actually rendered (15 U.S.C. 1127), so pre-launch marketing points to 1(b).
• A planned sale of the business or brand. The assignment limit on intent-to-use applications can shape the deal (15 U.S.C. 1060(a)(1)).
• A long runway. If launch is more than about three years past a notice of allowance, the 36-month limit can run out (37 CFR 2.89); a later application may fit better.
• A foreign applicant. Section 44 and Madrid bases have their own rules, and a Madrid basis cannot be combined with another (37 CFR 2.34(b)).

A Worked Example

Common Mistakes

• Claiming use for goods not yet sold. The claim must be true on the filing date for each item (37 CFR 2.34(a)(1)(i)); if it was not, substitute Section 1(b) before publication (TMEP 806.03(c)).
• Treating a launch page as use. A web page with no way to order is advertising, not a goods specimen (TMEP 904.03(i)(C)).
• Listing goods with no real plan. No documents showing intent can mean no bona fide intent (TMEP 1101).
• Filing an amendment to allege use during the blackout period. It will not be reviewed; wait for the notice of allowance (TMEP 1104.03(b)).
• Mixing bases without a plan to divide. A missed statement of use deadline can abandon the use-based items too (TMEP 806.02(d)(ii)).
• Agreeing to sell the brand before use is alleged. The statute bars that assignment except to a successor to the ongoing business (15 U.S.C. 1060(a)(1)).

What to Do This Week

1. List each product and service, and mark it in use or planned.
2. For items in use, collect the first-use dates and a real specimen for each class.
3. For planned items, gather business plans, designs, quotes and budgets showing your intent.
4. Search for conflicting marks before filing.
5. Decide whether mixed items belong in one application or separate ones.
6. Build a calendar and budget for any statement of use and extensions.

Frequently Asked Questions

Does Selling Only in Georgia Count as Use in Commerce?

Sometimes. The USPTO's examination manual says intrastate use can qualify if that type of use, taken in the aggregate, directly affects interstate commerce, and it cites cases where a sale to an out-of-state customer or a restaurant serving interstate travelers qualified (TMEP 901.03). Sales across state lines are the clearer case.

Is Intent to Use Weaker Than Use-Based Protection?

Not once it registers. The registration is the same, and the filing date counts as constructive use for both bases (15 U.S.C. 1057(c)). The difference is the extra filing, fees and time before registration.

Can You Use the Registered Symbol After Filing a Statement of Use?

No. The circled R is for registered marks only, and the mark is not registered until the certificate issues. Our page on when to use TM and the registered symbol explains the rule.

Do You Need Use on Every Listed Item Before Filing a Statement of Use?

Yes, on every item for which you will seek registration in that application (37 CFR 2.88(a)(2)). Items not yet in use can be deleted or divided into a separate application (37 CFR 2.88(a)(2)(ii)).

What Happens After the Mark Registers?

You must keep using it and file maintenance declarations between years five and six and before each tenth anniversary. Our post on registering a trademark in 8 steps shows the whole sequence.

Zala IP Law prepares federal trademark applications, statements of use and extension requests for clients across the United States and internationally. If you are deciding how to file before a launch, request a consultation or call 404-313-1701, and bring your list of products and services and any launch dates.