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Trademark registration is an essential step for protecting your brand and intellectual property. But what if you’re not quite ready to launch your product or service into the marketplace? This is where an “Intent to Use” (ITU) trademark application, also known as a 1(b) filing basis, comes into play. In this blog post, we’ll break down what an ITU application is, how it works, and why it could be a strategic choice for your business.                                                  

What Is an Intent to Use Trademark Application?

When filing a trademark application with the United States Patent and Trademark Office (USPTO), you have two main filing options:                                          

• In Use (1(a)): This applies if your trademark is already being used in commerce.
• Intent to Use (1(b)): This applies if you haven’t started using your trademark yet but have a genuine intent to do so in the near future.

Filing under an intent-to-use basis is a strategic approach for businesses that want to secure their trademark rights early, even before going public with their product or service.

For more information on the different filing bases, visit the International Trademark Association’s (INTA) fact sheet on filing a trademark application in the United States.                                           

How Does the Intent To Use Process Work?

Here’s a step-by-step breakdown of the intent-to-use trademark application process:                                  

1. Filing the Application

When filing under the intent-to-use  basis, you submit your trademark application without providing:

• A date of first use. Since the intent-to-use basis assumes you haven’t started using the trademark in commerce yet, you are not required to declare a first-use date.

A specimen. A specimen is proof of how the trademark is being used in commerce (e.g., a label, packaging, or a screenshot of a website showing the trademark in use). Under ITU, you don’t need to submit this initially because the mark isn’t yet in use.

The USPTO charges the same initial filing fee whether you select the in-use or intent-to-use basis.                              

2. USPTO Review

After submission, the USPTO examines your application for compliance and checks for conflicts with existing trademarks.                           

3. Notice of Allowance (NOA)

If approved, the USPTO issues a Notice of Allowance (NOA), meaning your application has passed the initial review but isn’t yet registered.                      

4. Statement of Use (SOU)

After receiving the NOA, you’ll need to file a Statement of Use (SOU) to prove your trademark is being used in commerce. The SOU must include:

• Evidence of how your trademark is used in connection with your goods or services.
• The date the trademark was first used in commerce.

Starting in 2025, the SOU filing fee will be $150 per class of goods or services.                      

5. Registration

Once the SOU is approved, your trademark will be officially registered.

For detailed instructions on filing a Statement of Use, check out this official USPTO SOU guide.                                           

Why File a Trademark Application Under Intent To Use?

Here are some of the key benefits of filing under an ITU basis:

1. Early Protection: Secures your priority filing date before your trademark is in use.
2. Flexibility: Gives you time to finalize your product or service launch while reserving your trademark.
3. Avoiding Conflict: Ensures another party doesn’t claim your trademark before you enter the market.                                  

Costs and Considerations

At Indie Law, we don’t charge any extra fees for filing under an intent-to-use basis. The initial filing fee is the same as an in-use application. The only additional cost is the Statement of Use filing fee, which is $150 per class starting in 2025.

Working with a knowledgeable trademark attorney is critical to ensure your application is accurate and complies with USPTO requirements. Errors in the process can lead to delays or even the rejection of your application.                                   

Is Intent To Use Right for You?

Filing your trademark application under an intent-to-use basis is perfect for businesses that want to secure their brand early while still preparing for an official launch. Whether you’re developing a new product, entering a new market, or rebranding, this filing basis provides the flexibility and protection your business needs.

 Final Thoughts

Trademarking your brand is an investment in its future. Understanding the Intent to Use application process empowers you to make informed decisions that protect your business’s identity and growth.

At Indie Law, we specialize in helping businesses navigate the trademark process with ease and confidence. Let us help you secure your brand’s future—reach out today to get started!

 

Table of Contents:

• What Does a Trademark Attorney Do?
• How a Trademark Attorney Helps with Trademark Registration
• Benefits of Hiring a Trademark Attorney
• Common Misconceptions About Trademark Attorneys
• Conclusion: Protect Your Brand with Expert Guidance

Securing a trademark is one of the most important steps in protecting your brand’s identity. Whether you’re a small business owner, an entrepreneur, or the head of a multinational corporation, trademarks serve as legal shields, protecting your logos, names, slogans, and more from unauthorized use.

But here’s the truth: the trademark registration process is complex. It’s not just about filling out forms; it’s about strategy, precision, and navigating nuanced legal requirements. And this is where a trademark attorney becomes invaluable.

In this article, we’ll dive into the role of a trademark attorney, why their expertise is essential, and how they ensure the registration process runs smoothly.

What Does a Trademark Attorney Do?

A trademark attorney is a licensed legal professional specializing in trademark law and intellectual property (IP). They assist businesses in securing trademark rights, navigating the United States Patent and Trademark Office (USPTO), and protecting their marks from infringement.

Their role isn’t just procedural—it’s strategic. From conducting thorough trademark searches to responding to USPTO office actions, attorneys help brands secure their most valuable assets with minimal risk and maximum efficiency.

The Critical Role of a Trademark Attorney in the Registration Process

1. Conducting a Comprehensive Trademark Search

One of the first steps in securing a trademark is ensuring your proposed mark doesn’t conflict with existing ones. A simple Google search or cursory glance at the USPTO database isn’t enough.

Trademark attorneys use specialized tools and databases to perform comprehensive searches, analyzing not only exact matches but also similar marks that could lead to a likelihood of confusion. This includes examining phonetic similarities, visual resemblances, and related goods or services.

For example, if you’re looking to trademark “Luxe Glow” for skincare, an attorney would flag potential conflicts with similar marks like “Lux Glow” or “Luxury Glow” or “Glow Luxoriously” or “Glow Deluxe.” This step minimizes the risk of rejection or legal disputes after you’ve invested in branding.

2. Providing Strategic Guidance on Trademark Selection

Not all trademarks are created equal. Some marks are inherently stronger and more protectable under the law. A trademark attorney helps you choose a mark that is not only distinctive but also legally viable.

• Generic Terms: Impossible to trademark (e.g., “Shoe” for footwear).
• Descriptive Marks: Hard to protect unless they’ve acquired secondary meaning (e.g., “Creamy Lotion” for moisturizers).
• Suggestive, Arbitrary, or Fanciful Marks: These are the gold standard for trademarks. Think “Apple” for technology (arbitrary) or “Nike” (fanciful).

Your attorney’s expertise ensures you invest in a mark that’s more likely to receive legal protection and less likely to face challenges.

3. Filing a Meticulous Application

The trademark application process with the USPTO is detail-intensive. Missteps—like misclassifying goods/services or providing an insufficient specimen—can result in costly delays or outright rejection.

Trademark attorneys craft your application with precision, ensuring:

• Accurate Identification of Goods/Services: They classify your products in the correct international classes (e.g., Class 25 for clothing or Class 3 for cosmetics).
• Proper Specimen Submission: For example, a product label or screenshot showing how the mark is used in commerce.
• Clear Ownership Details: Avoiding disputes down the line by properly documenting ownership.

This attention to detail streamlines the process and maximizes your chances of approval.

4. Responding to Office Actions

Even the most carefully prepared applications can face challenges. The USPTO may issue an office action, which is a formal notice of issues with your application. Common issues include:

• Likelihood of Confusion: Your mark is too similar to an existing trademark.
• Descriptiveness Refusal: Your mark merely describes the product or service.
• Improper Specimens: The evidence provided doesn’t meet USPTO standards.

Trademark attorneys craft legally sound and persuasive responses to address these issues, turning potential rejections into approvals. Their ability to navigate USPTO objections is a key reason businesses choose professional representation.

5. Ongoing Monitoring and Enforcement

Securing a trademark is just the beginning. Once registered, it’s up to you to enforce your rights.

Trademark attorneys offer monitoring services to ensure no one else is using a confusingly similar mark. If infringement occurs, they assist with:

• Sending cease-and-desist letters.
• Filing oppositions or cancellation proceedings.
• Representing you in trademark litigation if necessary.

Benefits of Hiring a Trademark Attorney

While it’s technically possible to file a trademark application yourself, the advantages of working with an attorney far outweigh the costs:

• Avoid Costly Mistakes: Incorrect filings or inadequate searches can lead to rejection, re-filing fees, or legal disputes.
• Save Time: Attorneys handle the heavy lifting, allowing you to focus on growing your business.
• Gain Strategic Insight: From choosing a strong mark to navigating office actions, their expertise is invaluable.
• Ensure Long-Term Protection: They don’t just help with registration—they also assist with enforcement, licensing, and renewals.

Common Misconceptions About Trademark Attorneys

• “I Don’t Need an Attorney for a Simple Mark.” Even seemingly straightforward marks can face issues if not properly researched or filed.
• “It’s Too Expensive.” The cost of hiring an attorney is minimal compared to the expense of fixing errors or fighting legal disputes.
• “I Can Do It Online Myself.” While DIY tools exist, they lack the nuanced expertise needed to navigate complex trademark law.

Final Thoughts: Protect Your Brand with Professional Guidance

Your trademark isn’t just a legal formality—it’s a cornerstone of your brand’s identity. Hiring a trademark attorney ensures you’re not only protecting your business today but also building a foundation for future growth.

From the initial search to post-registration enforcement, their expertise guides you through every step of the process, saving you time, money, and headaches along the way.

If you’re ready to register your trademark or need guidance on protecting your brand, reach out to our team of experienced trademark attorneys. Share this article with anyone building their brand—they’ll thank you for it.