Registering a name or logo can be done in two ways. The two options when filing a trademark application are:
- Actual use or
- Intent to use
Actual use means you have already been using your name in commerce. Intent to use is the most likely choice if have chosen a name and have a bona fide intention to use it, but have not started using your name in commerce. A bona fide intention carries requirements of its own. For example, it is not sufficient to have a mental note planning to use a particular mark. In Spirits Int’l B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, Opposition No. 91163779, 99 U.S.P.Q.2d 1545 (T.T.A.B. 2011) the Trademark Trial and Appeal board held that: “The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof sufficient to establish that the applicant lacks a bona fide intention to use its mark in commerce.” (Slip op. at 9.) Long story short, be prepared to show proof or have proof that you are working toward establishing, growing, and building upon the mark you plan to register. Registering a name or logo isn’t without some work and due diligence.
Filing an intent to use application is a little more costly than filing an actual use application. The applicant must pay $100 more when he/she is ready toshow use of the mark by filing an Amendment to Allege Use or a Statement to Use.
The benefit to registering a name or logo under an intent to use application is finding out whether your mark is distinctive enough to allow for its registration before having invested a significant amount of financial resources into your branding. If your mark is not distinctive enough there is less at risk when compared to someone that has been using a mark for a long time and then seeks registration of their mark based on actual use. A successful intent to use application will result in a ‘Notice of Allowance’, but an actual registration.
In short registering a name or logo under an intent to use application can be great for an applicant that is ready to take their brand to the next level and is committed to being able to file a statement of use within 6 months after receiving a Notice of Allowance. For more info. on related topics, check out “ What does it mean to use my trademark in commerce?”