Seattle Trademark Lawyer

Here’s a frequent question: Can I reserve a trademark?

It’s a good one, because it indicates the questioner knows that in the United States, a party acquires a trademark through use, not registration.

So what if a mark hasn’t been used?

You’re in luck! The Lanham Act allows a party with a bona fide intent to use a trademark in the future essentially to pre-register the mark. That is, the party files an application and pays the Patent and Trademark Office’s $275-per-class fee for an electronic filing. The PTO examines the application to see if it qualifies for registration. If it does, the PTO then publishes the mark for opposition, which enables third parties to object to the mark if they believe they would be injured by the registration. If no one objects, rather than issuing a registration, the PTO issues a “notice of allowance.” At that point, all the filer has to do is file a “statement of use” swearing under oath that he, she, or it has put the mark to actual use in commerce — along with proof of such use (such as a photograph of the good depicting the mark or a Web site screen shot showing how the service is being sold).

The PTO charges another $100 to process the statement of use. A party gets six months to file the statement, but it can be extended by filing for an extension (and paying another $150) every six months for as long as three years. (That means taking the maximum allowable extensions can increase the PTO’s cost for an application by $900 — a decent chunk of change.) A missed filing or the failure to establish use within those three years renders the application abandoned — the mark goes back into the public domain and anyone can adopt it for their good or service. Even a competitor. And as the PTO will tell you about the fees you paid: no refunds and no returns.

The neat thing about the intent-to-use scheme is the filer’s priority date is pegged at the date the application is filed, not the months or even years later after one proves use and obtains the registration.

This also means the PTO’s built-in delay — which usually isn’t onerous, though not terribly welcome — works to the applicant’s advantage. The nine months or more it takes the PTO to issue a notice of allowance is “free” time the applicant can devote to putting the mark to use without having the delay prejudice its rights.

Along the way, an applicant also can convert its application to one based on use by filing an amendment to allege use (and by paying the $100 the PTO requires to do so).

Intent-to-use applications are a creature of federal law. To my knowledge, no state offers an intent-to-use option for state registrations.

Intent-to-use applications are great when needed. But if you can allege use on the front end, you ought to do so.