- Ever wondered if you can start the trademark process
before you even started your business?
Well, you have come to the right spot.
Stay tuned 'cause I'm about to explain how to do just that.
(gentle music)
Hi everyone I'm attorney Aiden Durham
with 180 Law Co in Colorado.
And welcome back To All Up In Yo' Business.
Today we're gonna talk about filing a trademark application
with the USPTO on a 1(b) intent-to-use basis.
I'm gonna tell you what it means to do that,
when you would wanna do that and the process,
if you filed an intent-to-use trademark applications.
But before we get into it,
don't forget to like, subscribe, and share,
and check the description
for links to additional information and resources.
Including my intro to trademarks guide,
which you can download for free
and you can learn more about BRANDISH,
which is my online DIY trademark course
that teaches you step-by-step how to prepare for
and file a trademark application with the USPTO
on your own without a lawyer.
All right so if you're ready to file a trademark application
with the USPTO, one of the first steps
is selecting your filing basis.
The two most common filing basis that we deal with
are either 1(a) current use basis
or a 1(b) intent-to-use basis.
Something I've mentioned plenty of times
here on my channel before
and in conversation and on social media.
And I say it a lot,
and I really like to say it because it gets people confused,
but it gets my point across,
a trademark isn't a trademark until it becomes a trademark.
What do I mean by that?
You have to actually be using a trademark
in commerce in connection with your goods or services
in order for it to be considered a trademark.
A trademark, isn't an idea for a name
or a idea for a logo
that you wanna use for your business.
Those are ideas for trademarks,
but only when you're actually using it,
when the public is seeing it on your website
and they can sign up for your services
or they can purchase your product.
Only when we are seeing it out in public,
in connection with the sale of your goods or services,
does it actually become a trademark?
And so with that, if you're filing a trademark application,
the trademark won't actually be registered
if you're not using the trademark in commerce.
And that's where that 1(b) intent-to-use filing basis
comes into play.
If we're filing a trademark application
on a 1(a) current use basis,
we are telling the USPTO
that we are currently using this trademark in commerce.
And along with that,
we have to attach to our application a specimen,
which is basically proof
demonstrating to the examining attorney,
to the USPTO, how we are using the trademark in commerce.
Often this'll be a screenshot
or a few screenshots of a website.
Sometimes it can be product packaging
or labels on a product or marketing materials.
Specimens can come in all shapes and sizes.
But the point is with a 1(a) application
where it's hatching that specimen
when we submit the application.
But what if you wanna get a headstart
on the trademark application process?
Or what if you're starting your business
and you wanna make sure this trademark's actually available
for you to use,
and available for you to register before you fully launch,
or what if you're already pretty sure
that the name's available,
you'll be able to get the trademark,
but you wanna make sure no one swoops in there
before you get around to it
and files an application before you do.
Those are all perfect instances for filing an application
on a 1(b) intent-to-use basis.
When we file on a 1(b) basis,
we're telling the USPTO,
we're not currently using this trademark in commerce,
but we are intending to in the near future.
Technically we're telling them we have a bonafide intent
to use it at some point in the future.
But the point is,
we're telling them we're not currently using it,
but we're planning to.
Filing on a 1(b) basis is a great way to get the USPTO's
kind of stamp of approval on your trademark
before you invest a ton of money into marketing materials
or designing your website or designing your packaging.
And before you go into investing into this name or this logo
that you might really, really love,
but maybe it's not available.
Filing on a 1(b) intent-to-use basis is a good way
of making sure through the USPTO's lens
that this is going to be available for us.
And like I said,
it's also a great way of making sure
that nobody else gets in there
and files an application for the same
or a similar name before you start using your trademark
and file on a current use basis.
Basically, it's like getting your foot in the door,
starting that application process
and that registration process
before you've actually started your business.
And then once you've actually started,
then the trademark can eventually become registered.
So what does the process look like if we're filing
on an intent-to-use basis versus a current use basis?
It's not all that different for the most part,
the process is pretty much the same.
The first difference you're gonna run into
is when you're filing the application,
of course, we're not going to submit a specimen
along with the application,
since we're not using the trademark yet
we have no specimen to submit.
So we leave that out of the application,
but once it's submitted,
the process immediately after is exactly the same
as filing on a 1(a) current use basis.
The USPTO is going to assign an examining attorney
to your application.
And this examining attorney
is going to look over your application,
make sure everything's in line with the laws
and requirements for registration.
And they're also gonna do a search
and compare your trademark
to other registered trademarks with the USPTO,
to make sure yours isn't confusingly similar
with somebody else's registered trademark.
If the examining attorney
finds any issues with your application,
or if they have questions
or need clarification about something,
or if they run across some confusingly,
similar registered marks,
then the examining attorney
is going to issue an office action,
which will describe why they need more information
or why they're initially rejecting your application.
If there are other marks that might be too similar.
But let's pretend that doesn't happen.
Let's pretend everything is correct on your application.
No office actions are issued.
Nothing like that happens after the examining attorney
goes over your application, does their search.
They're going to approve it for publication.
This is true for both a 1(a) and a 1(b) filing basis.
It'll be approved for publication
in the Trademark Official Gazette,
and then will be published for 30 days,
which gives the general public an opportunity
to oppose your registration,
if they feel that it steps on their rights
or might be confusingly similar with their trademark.
After publication,
this is where things start to get a little different
with a 1(a) versus a 1(b) application.
So for filing on a current use 1(a) basis,
after publication, the process is pretty much done.
The examining attorney is gonna do one more review,
once over after publication,
just to double check that everything's okay.
But then within a short amount of time,
the trademarks typically going to be officially registered,
they send you the certificate.
We celebrate and have a party,
break out the champagne,
we're trademark owners.
Great day for everyone.
But on a 1(b) intent-to-use basis,
after publication, now's our time
to start telling the USPTO,
we have started using this trademark in commerce,
because like I said,
they won't register it unless you're using it in commerce,
because it's not a trademark
unless you're using it in commerce.
So after the publication phase,
after all of that stuff
with a 1(b) intent-to-use application,
the examining attorney is going
to issue a Notice of Allowance.
In a nutshell, the Notice of Allowance will say,
everything's good with your application.
We don't have any issues.
Now's your opportunity to file a Statement of Use
or request an extension to file the Statement of Use.
Once that Notice of Allowance is issued,
we have six months from the date
of that Notice of Allowance to file a Statement of Use.
The Statement of Use is basically the specimen.
This is where we again,
show the USPTO proof
that we've started using the trademark in commerce,
in connection with the goods and services
that we identified on the application.
We have to tell the USPTO,
the date of first use along with uploading the specimen,
which again can be a screenshot of a website,
marketing materials, product, packaging labels,
a whole host of different options there,
but we'll file that Statement of Use to show the USPTO,
we're good to proceed with registration,
but what if there's that six month timeframe
after the Notice of Allowance?
What if we haven't started using the trademark yet?
What if we need a little bit more time?
Don't worry.
We can get more time.
Instead of filing a Statement of Use,
we can request a another six month extension
to file the Statement of Use,
and we can continue requesting extensions
up to five total extensions,
which overall gives you about three years at maximum
before you'd have to file that Statement of Use.
The other difference here is gonna have to do
with filing fees.
So with a 1(a) application,
the only fees we usually have to deal with
are those initial application filing fees,
but with a 1(b) application,
the USPTO is gonna charge us a little bit
when we file that Statement of Use,
or if we request those extensions.
Currently, the USPTO filing fee is a $100 per class
to file the Statement of Use
and $125 per class for each request for an extension.
So if we get that Notice of Allowance,
we need a little bit more time.
We can request another six month extension
for 125 bucks per class.
We'll get an additional six months.
Maybe we need more time.
We can request another extension,
again, another a 125 bucks per class,
or if we're good to go, if we're ready,
we can file that Statement of Use
along with that filing fee of a $100 per class.
And then from there,
assuming the examining attorney
accepts your Statement of Use,
accepts the specimen that you submitted.
No other issues arise with the specimen
then the trademark will proceed through the process
and will be registered within a few weeks
typically after that Statement of Use.
Sometimes though we might have to get a little creative.
Let's say we've filed the application
and we identified a few different classes
of goods and services.
Maybe we're selling clothing and apparel,
and we're also selling household items like coffee cups,
dishes, I don't know couches, dog food,
let's say on our application,
we told the USPTO we're gonna be using this trademark
in connection with the sale of clothing and dog food.
So that Notice of Allowance, we get that,
and we've got six months to file our Statement of Use,
but what if, okay, we've started selling the clothing,
but we still need more time with the dog food thing.
We haven't started using our trademark
in connection with dog food just yet.
Can you request an extension for one
and file a Statement of Use for the other?
No, but there is a way around it.
And this is by using a Request to Divide,
a Request to Divide is kind of exactly what it sounds like.
We're requesting that the USPTO divide our application
into two or more kind of child applications.
So instead of having one application
with two classes of goods and services on it,
we're dividing it into two separate applications
each with its own class of goods or services.
Now, we can file the Statement of Use
for the clothing items on that application,
and we can request an extension
for the dog food on the other application.
And the benefit of this is
that it won't hold up the registration
because we can't show use of both classes.
Otherwise, if we requested extensions for each,
that's gonna delay the registration
until we're using the trademark for both classes.
That's not always a terrible thing,
but sometimes we wanna get that registration done,
right away, or as soon as possible, at least.
So by requesting to divide the application,
it lets the registration go through with one class
and we'll keep the application
kind of in this pending phase
for the other class or classes.
And there is of course,
an additional filing fee
for submitting that Request to Divide,
because technically we're now creating
a brand new trademark application.
So the USPTO wants some extra money for that.
Currently the filing fee for a Request to Divide
is a 100$ per class in most instances,
whether you filed a Statement of Use
or request an extension to file the Statement of Use
or Request to Divide applications,
outside of that,
the rest of the process is gonna look pretty much the same
as if we're filing on a 1(a) current use basis.
Once they get that Statement of Use
and review the specimen, make sure everything looks good.
The last step is that one last review,
and then it will be approved for registration
then yay, registration, party, champagne, certificate,
all the good stuff.
Or in some cases we can request extension after extension,
but they only give us five requests.
Sometimes we need more time than that
and in those instances,
typically the application will become abandoned.
If you don't eventually file a Statement of Use
within that time period,
after we've maxed out all of our extension requests.
So if you're thinking
about filing on an intent-to-use basis,
you wanna make sure you've got a pretty decent opportunity
to actually launch your business
and start using the trademark within,
at a maximum about three years,
which is a pretty good amount of time.
On the shorter end after we filed the application,
we'll have about nine months give or take.
Sometimes it's a little bit longer,
sometimes a little bit less,
but we'll have about nine months
after we submit the application
before that Notice of Allowance will be issued
and we'll have to file a Statement of Use
or request an extension.
So as long as you feel pretty confident
that you can launch your business,
start using the trademark within about nine months
to three years after you submit the application.
Then an intent-to-use filing basis is a great way
to make sure the trademarks gonna be available for you
before you've fully launched
or before you've invested a ton of money
into your branding and business,
and getting the name or your logo,
or your trademark or whatever it is out there.
That's all for this episode folks.
Drop a comment below.
Let me know what you think.
And again, don't forget to check the description
for links to additional information and resources.
You can download my free introduction
to trademarks guide for a better overall understanding
of how trademarks work
and why a trademark isn't a trademark
until it becomes a trademark.
Or if you're interested
in submitting a trademark application with the USPTO
and you can't afford to work with an attorney,
or maybe you just don't want to work with an attorney,
but you need a little extra handholding,
then check out BRANDISH,
my DIY trademark course,
where I teach you step-by-step how to prepare for
and submit a trademark application,
whether on a 1(a) or 1(b) filing basis.
And I walk you through the entire process
so you can take care of your own trademark registrations
without a lawyer.
Thank you all so much for watching.
I'm Aiden Durham, and I'll see you next time.
(upbeat music)