A Section 1(b) intent-to-use application allows an applicant with a bona fide intention to use a mark in commerce to seek registration before that use begins. It can be part of planning a product launch or new service, but a filing under this basis does not by itself produce a registration.
What should you prepare before filing?
Identify the planned goods or services, the intended owner, and the proposed mark. Preserve records reflecting genuine business plans, such as product development, supplier discussions, or launch preparation. A speculative desire to reserve a name is not the same as a bona fide intent to use it.
Discuss a clearance search before investing in packaging, advertising, or a website. An intent-to-use basis does not remove conflicts with earlier marks or other registration requirements.
From examination to proof of use
Upon substantive examination, the USPTO may issue an Office Action that requires an Office Action response. Before registration under Section 1(b), an applicant must submit an acceptable allegation of use with appropriate evidence and fees. The proper filing depends on the application's stage.
After a Notice of Allowance, an applicant generally has six months to submit a Statement of Use; or request a six-month extension to do the same. The USPTO provides up to five extensions, if all requirements are met, whereby applicants have up to three years from the date of the Notice of Allowance to file a Statement of Use before the application will go abandoned.
Match the filing plan to the launch
Review which goods or services are actually in qualifying use, which remain planned, and whether the evidence supports the statements to be filed. A staged launch can require a discussion about extensions, deleting items, or dividing an application. The appropriate route depends on the facts.
Bring your launch schedule, application records, draft packaging, and examples of actual marketplace use to the discussion. Ask how initial filing, later use submissions, and extension requests will be budgeted. See the application checklist for the information needed to get started.
Discuss your trademark
Contact Lowry Blixseth APC in Agoura Hills to discuss your brand, application, or trademark dispute.