Scarinci Hollenbeck, LLC, LLCScarinci Hollenbeck, LLC, LLC

Firm News

Getting Your Trademark Filed: Intent-to-use Vs. Actual Use

Author: Scarinci Hollenbeck, LLC

Date: May 9, 2016

Key Contacts

Back

If you’re doing business in the US and want to acquire a trademark registration, there are two main types of applications that you can file.

Use-based application: A use-based application is appropriate when you are already using the mark in commerce. The process includes (1) filing an application that states the date that you first used it in commerce and (2) providing an example of that use. This shows the United States Patent and Trademark Office (USPTO) that you deserve registered trademark protection.

Intent-to-use application: The other type of trademark application deals with intending to release a product or service using the mark at some point in the future.

Trademark Examining Attorneys evaluate intent-to-use applications and use-based applications in the same way-by determining whether or not there are other marks on the register that could be confusingly similar to the mark that you have applied for, whether or not the mark is descriptive of the goods and services in question, etc. Both filings also provide for a priority filing date with the USPTO.

For a use-based application, once your application is cleared, and it moves through the prosecution process, a registration will issue. With intent-to-use applications, because you have not yet shown use, you will receive a Notice of Allowance instead of a registration. That means anyone who files an application after your filing date will be junior to you, which in turn means you will have priority over them for all matters involving intellectual property rights. But you don’t have a registration just yet.

Once you have a Notice of Allowance in hand, you have to file what is called a “Statement of Use” within 6 months of the notice issuing. This statement requires you to provide an example of your use of the mark in commerce with the covered goods and/or services. It also requires the applicant to specify the date the mark was first used. Then, once the Statement of Use is accepted, a registration will issue. The only downside of an intent-to-use application is the USPTO charges a fee to file the Statement of Use.

What happens if you’re not using the trademark 6 months after receiving your Notice of Allowance?

Applicants have up five 6-month extensions possibly available, but it is incumbent on the applicant to request these extensions from the USPTO. This allows you to keep your intent-to-use application “alive” for up to 3 years after receiving your Notice of Allowance. As long as you can show that you are actively working on research and development, developing your marketing, or preparing the product or service for launch, the USPTO will generally grant your extension applications.

Whether you have a small or large company, if you have plans to offer new products or seek further coverage on the services that you already offer, an intent-to-use application can get you to the front of the filing line and maintain your options for a good period of time. You can file an intent-to-use application that includes all the other products that you plan to release, and you will then be able to secure registration for them as soon as you are ready to move forward.

    No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

    Scarinci Hollenbeck, LLC, LLC

    Related Posts

    See all
    Somerset County Counsel Joins Scarinci Hollenbeck Real Estate Section post image

    Somerset County Counsel Joins Scarinci Hollenbeck Real Estate Section

    Veteran New Jersey Real Estate Attorney Joe DeMarco and Two Associates Join Scarinci Hollenbeck Little Falls, NJ — September 25, 2025 — In a move that bolsters the capabilities of its leading Real Estate, Land Use, and Public Practices, Scarinci Hollenbeck, LLC has added Joseph DeMarco as Partner. DeMarco is a veteran attorney and municipal […]

    Author: Scarinci Hollenbeck, LLC

    Link to post with title - "Somerset County Counsel Joins Scarinci Hollenbeck Real Estate Section"
    Don Pepe and Donald Scarinci Named to NJBIZ's 2025 Power 50 in Law List post image

    Don Pepe and Donald Scarinci Named to NJBIZ's 2025 Power 50 in Law List

    Scarinci Hollenbeck Congratulates Partners Don Pepe and Donald Scarinci for Inclusion in NJBIZ’s 2025 Power 50 in Law List Little Falls, NJ — September 23, 2025 — Scarinci Hollenbeck, LLC is proud to announce that Donald Scarinci, Founding & Managing Partner, and Donald M. Pepe, Partner of the firm’s Commercial Real Estate Department, were both […]

    Author: Scarinci Hollenbeck, LLC

    Link to post with title - "Don Pepe and Donald Scarinci Named to NJBIZ's 2025 Power 50 in Law List"
    Christopher D. Warren Appointed to NJ Ethics Committee post image

    Christopher D. Warren Appointed to NJ Ethics Committee

    Scarinci Hollenbeck Partner Christopher D. Warren Named to New Jersey Supreme Court District VI Ethics Committee Little Falls, NJ — September 5, 2025 — Scarinci Hollenbeck, LLC is proud to announce that Christopher D. Warren, Partner, has been appointed to serve on the New Jersey Supreme Court District VI Ethics Committee for the term 2025–2029. Mr. Warren brings more than […]

    Author: Scarinci Hollenbeck, LLC

    Link to post with title - "Christopher D. Warren Appointed to NJ Ethics Committee"
    Scarinci Hollenbeck Awards Inaugural Theodore A. Schwartz Scholarship for Environmental Law post image

    Scarinci Hollenbeck Awards Inaugural Theodore A. Schwartz Scholarship for Environmental Law

    Scarinci Hollenbeck Congratulates Theodore A. Schwartz Scholarship Recipient Adrienne Aiken Little Falls, NJ — July 21, 2025 — Scarinci Hollenbeck, LLC established the Theodore A. Schwartz Scholarship for Environmental Law to recognize the contributions of retired partner Theodore “Ted” Schwartz and support the next generation of environmental lawyers. Adrienne Aiken, the recipient of the 2025 […]

    Author: Scarinci Hollenbeck, LLC

    Link to post with title - "Scarinci Hollenbeck Awards Inaugural Theodore A. Schwartz Scholarship for Environmental Law"
    Scarinci Hollenbeck Attorneys Recognized as 2026 Best Lawyers in America® post image

    Scarinci Hollenbeck Attorneys Recognized as 2026 Best Lawyers in America®

    Ten Scarinci Hollenbeck Attorneys Recognized in 2026 Edition of Best Lawyers in America© Little Falls NJ – August 28, 2025 – Scarinci Hollenbeck, LLC is pleased to announce that ten attorneys have been recognized in the 2026 edition of The Best Lawyers in America®. First published in 1983, Best Lawyers is universally regarded as the definitive guide to legal excellence. […]

    Author: Scarinci Hollenbeck, LLC

    Link to post with title - "Scarinci Hollenbeck Attorneys Recognized as 2026 Best Lawyers in America®"
    Donald M. Pepe Named GlobeSt. Influencer in Industrial Real Estate post image

    Donald M. Pepe Named GlobeSt. Influencer in Industrial Real Estate

    Scarinci Hollenbeck Partner Recognized for Continued Impact on Industrial Real Estate Industry Little Falls, NJ — July 25, 2025 — Scarinci Hollenbeck, LLC Partner Donald “Don” Pepe was recently recognized as a 2025 Influencer in Industrial Real Estate by GlobeSt, a leading commercial real estate publication. The GlobeSt award recognizes the professionals, teams, and companies […]

    Author: Scarinci Hollenbeck, LLC

    Link to post with title - "Donald M. Pepe Named GlobeSt. Influencer in Industrial Real Estate"

    No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

    Sign up to get the latest from our attorneys!

    Explore What Matters Most to You.

    Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.

    Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.

    Let`s get in touch!

    * The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form. By providing a telephone number and submitting this form you are consenting to be contacted by SMS text message. Message & data rates may apply. Message frequency may vary. You can reply STOP to opt-out of further messaging.

    Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!