Using Intent-to-Use Trademark Applications to Your Advantage

An intent-to-use (ITU) application is a tool for entrepreneurs, innovators, or established businesses with an idea for a brand or product name that, although close, is not yet ready for market. ITUs, codified under 15 U.S.C §1057(c), are an exception to the common law principle of trademarks that the first to use the mark in commerce has a priority right to the mark, and establishes nationwide a priority date for the applicant once the applied for mark is used in commerce and matures to a registration.

When filing for an ITU application, the applicant must have a genuine intention to use the mark in commerce in the near future. Subsequent to the application, the United States Patent and Trademark Office (USPTO) will issue a Notice of Allowance (NOA) to the applicant providing the applicant six months to use the mark in commerce and file a Statement of Use (SOU), showing that use in commerce. If the applicant is unable to use the mark in commerce during that period, the applicant is allowed to file up to five extension requests, each for an additional six-month period. In total, this allows the applicants up to three years from the issue date of the NOA to use the mark in commerce.  

Once the mark is used in commerce, and the SOU is filed, the mark will register. The maturation of the ITU application to a registered mark is essential because the protection created by the constructive use priority date vests upon the maturation of the ITU into a registered mark. The constructive use priority date functions as a way to bring trademark infringement actions against other users of similar marks, whose use of the similar mark began after the filing of the ITU application, but before the use in commerce. This provides a path to protect a mark from being used by others even if the mark itself is not immediately ready for use in commerce. However, the constructive use priority date is contingent upon the maturing of the mark to registration.  An ITU application that does not mature into a registration never vests the constructive use priority date and lacks cause of action against subsequent users of the mark who are first to use the mark in commerce.

Although it is a beneficial tool to protect your ideas and marks, ITUs may not serve the needs of every business.  The only recognition for ITUs is at the federal level. All fifty (50) states apply the common law first use-in-commerce standard to the states trademark registration processes.

Example

Consider the following illustration, which assumes there is no prior use of the hypothetical mark.

• Business One (“B1”) is an established retailer that has developed a new mark for a product line (“Gizmo”) that B1 plans to sell all over the country once the Gizmo can be produced and sold. B1 files an ITU application for the mark “GIZMO” with the USPTO in January of 2026.
• The USPTO reviews and approves the GIZMO application and issues the Notice of Allowance. B1 has not yet finalized development and distribution of the Gizmo product, so files extension requests.
• Business Two (“B2”), a competitor, begins marketing a new product line that is marketed as “GZMO” in January 2027. B2 does not apply for federal registration.
• In January 2029, B1 begins using Gizmo throughout the country, and files a Statement of Use, and the mark is ultimately registered with the USPTO.
• Concerned with the similarity between the marks, B1 brings a trademark infringement suit seeking injunctive relief to stop B2’s use of GZMO.
• B2 argues that B2 has priority because it was the first to use its mark.
• B1 responds that because its ITU application matured into a registration, B1 is entitled to a constructive use priority date which dates back to the day B1 filed its ITU application, January 2026, a year before B2 began using GZMO.

Under 15 U.S.C. §1057(c), the constructive use date provides nationwide priority for the mark dating back to the filing date and protecting B1’s interests.

Conclusion

A trademark grants you exclusive rights to use your brand identifiers, protecting you from competing marks that are likely to cause confusion for customers. ITUs are an extension on these trademark protections and a valuable tool that allows you to protect your mark for a short period while preparing the mark for use in commerce.

Grayson J. Derrick
Aiden T. Welsh, Summer Associate