intent to use trademark application

In one of our first posts, we discussed the five categories of trademarks (Generic – Descriptive – Suggestive – Arbitrary – Fanciful) and how a mark became more protectable as it moved up the line. Laudatory trademarks, trademarks that attribute a quality or excellence to the goods or services, are often included in this list as “descriptive marks” requiring a showing of secondary meaning to be protectable. However, it has been recognized that some laudatory marks do not describe any feature of the product it is used with, but rather suggest that the product is of high quality or “better” quality than other similar products. In these cases, the laudatory composite mark may be considered to be suggestive.
Continue Reading Branding 101 – Laudatory Trademarks: Are they worth the effort?

The mark has been chosen, the trademark search was clear, and it has been decided that the mark should be registered. The next step in the process is straightforward – file an intent to use (ITU) trademark application.

It is not necessary or recommended to wait until the mark has been used to file the application. An application can be filed based on your bone fide intent to use the mark in the future. However, the application will not register until after use begins. Once use begins, a separate statement is filed claiming this use. This statement can be filed prior to approval for publication of the mark, or after issuance of a notice of allowance. There is a blackout period, between approval for publication and issuance of the notice of allowance during which a use statement cannot be filed. If the use statement is filed prior to publication, the application will proceed to registration once the publication period is complete (if no opposition was filed).
Continue Reading Branding 101 – The Registration Process