Trademarks: Difference Between "Use" and "Intent to Use" Application
Increasingly, Amazon is focusing on and giving preference to products that are sold by trademarked brands.
Trademarks also help make your business more defensible and therefore more sellable to an aggregator if you decide to exit.
There are two types of Trademark applications:
- Use application
- Intent to Use application
A trademark office will file a “use” application only when you show proof of selling your items in the US. The “intent to use” application comes into the picture when you are not selling yet. Both types of applications work equally for Amazon.
Here are some FAQs on trademark applications.
I am not selling any goods yet. Can I file a trademark application?
Yes, there are two kinds of trademark applications. “Use” applications and “Intent to use” applications.
What does "Use" mean?
In the most basic terms, “Use” means you are selling your goods or providing your services in the United States RIGHT NOW. The United States requires that you are USING a mark (SELLING your goods) in United States in commerce before your mark can REGISTER with the PTO.
Can I file a "Use" application if I already have product with my mark on it but I am NOT SELLING in the United States?
No, you can’t. You need to actually be selling right now in a consistent way to other people in the United States. You cannot just make one sale to your mother or brother and say you are selling.
Can I file a "Use" application if I am selling in the United States but not on Amazon?
Sure, Amazon is not the only way to sell your goods in the United States.
Well, I don’t have "Use" yet because I am not selling in the United States. What can I do?
We can file an “intent to use” application.
What does an "Intent to Use" application mean? Will it work for Amazon?
It means that you are not yet selling but you want to get an application on file for priority. In your case, you can also use the “Intent to Use” application for Amazon Brand Registry purposes.
Does an "Intent to Use" application cost more?
It does not cost more NOW. But, in several months we will hopefully receive a Notice of Allowance (NOA) that “allows” your mark.
But, an allowance is not a registration. For a mark to REGISTER with the PTO, you need to show you are SELLING. You have six months from the time we receive an NOA to show your use. This is called a STATEMENT OF USE (SOU). When law firm Loza & Loza files that SOU (about a year from now), they charge US$400 for their time and the filing fee is US$100/class. So, right now, the cost is the same. In a year, you’ll have to pay some more money for your mark to REGISTER.
I don’t know what I will be selling yet. What should I do?
You need to figure out what you might sell before a law firm can search or file an application for you.
You cannot file a trademark in a broad category of goods like “household products” or “kitchen stuff”. If you are filing an “Intent to Use” application because you are not yet selling goods, your mark can be filed in one class listing ANY goods you intend to sell. This can be over-broad and any goods that you are not selling when we file a SOU will have to be removed.
If you are trying to figure out classes and goods to list, you can look at this searchable manual at the PTO: https://idm-tmng.uspto.gov/id-master-list-public.html. There is also a summary of classes here: https://www.uspto.gov/trademark/trademark-updates-and-announcements/nice-agreement-current-edition- version-general-remarks.
If you are filing a “Use” application (because you are currently selling goods), then you can only list what you are selling RIGHT NOW. You cannot list anything you might sell in the future.
But, what if I want to sell something else in the future? What will happen to my Brand Registry? What happens to my trademark protection?
Keep in mind that, (1) Amazon doesn’t care if you are selling goods that are not in the application and (2) you are able to sell goods even if you do not have them in your application.
There is no limitation on your USE based on what is your application. You will have limited trademark protection if you start selling goods that are totally unrelated to what was filed in your application.
For example, if you register XYZ mark in connection with cosmetics, and then one day you start selling car tires, your trademark protection will likely be limited to common law trademark rights.
But, you will have Brand Registry rights on Amazon.
This information is provided by Loza & Loza – our Partner of the Month for May and our recommended trademark attorney for the US.
They are efficient, thorough and very professional when it comes to filing trademarks and patents. They are an IP Accelerator firm, and can help you get Brand Registry approval quickly.
You can contact them via their webpage here: https://indiasourcing.net/loza