Recent scrutiny of U.S. trademark agencies for allegedly submitting fraudulent usage evidence has highlighted the growing importance of compliance in trademark applications. This development serves as a clear warning to applicants: adherence to regulations is now imperative, and the barriers to U.S. trademark registration will only continue to rise.
The U.S. trademark system operates on a "first-to-use" principle, granting rights to the earliest commercial user of a mark—even if unregistered. In disputes, the United States Patent and Trademark Office (USPTO) prioritizes protection for the first user. This article focuses on "intent-to-use" applications, providing detailed guidance for businesses and individuals entering the American market.
Four Pathways to U.S. Trademark Registration
For many applicants, providing authentic usage evidence presents the greatest challenge. The USPTO recognizes four filing bases:
- Actual Use (Section 1(a)): For marks already used commercially in the U.S. before filing. Applicants must submit proof with their application and maintain documentation during renewal periods (5-6 years post-registration).
- Intent-to-Use (Section 1(b)): For marks not yet in use but with demonstrable plans for future commercial application. After examination and publication, applicants must submit proof within six months of receiving a Notice of Allowance, extendable up to three years with fees.
- Foreign Registration (Section 44(e)): For marks registered in the applicant's home country. Requires submission of the foreign registration certificate (with translation) and subsequent U.S. usage evidence during renewal periods.
- Foreign Priority (Section 44(d)): For marks with pending applications abroad. Requires foreign filing receipts (translated) and eventual proof of home country registration. This high-risk option automatically voids if the foreign application fails.
Intent-to-Use Applications: Simplified Process, Not Evidence-Free
While intent-to-use applications eliminate initial evidence requirements, they don't provide permanent exemptions. After clearing examination and opposition periods, applicants receive a Notice of Allowance and must then submit proof within strict deadlines:
- Initial 6-month period from Notice of Allowance
- Maximum 3-year total timeframe
- Up to five 6-month extensions available (with fees)
This system allows market entry planning while maintaining the fundamental "use-it-or-lose-it" trademark philosophy.
Comparative Analysis: Actual Use vs. Intent-to-Use
| Characteristic | Actual Use Application | Intent-to-Use Application |
|---|---|---|
| Applicability | Mark already in U.S. commercial use | Planned future use in U.S. market |
| Documentation | Usage evidence required upfront | Initial filing without evidence |
| Examination | Rigorous evidence verification | Focus on distinctiveness and conflicts |
| Timeline | Shorter registration period | Extended process awaiting evidence |
| Cost Factors | Potential evidence-related expenses | Possible extension fees |
| Risks | Rejection for insufficient evidence | Abandonment if evidence not provided |
| Advantages | Faster rights establishment | Early market entry planning |
Essential Requirements for U.S. Trademark Registration
All applications must meet these criteria:
- Submission becomes public record
- Clear identification of mark type (word, design, color, etc.)
- Comprehensive search for conflicting marks
- Proper classification under Nice System
- Appropriate filing basis selection
- Compliance with foreign applicant requirements
- Correct form selection
Required Documentation:
- Applicant identification (business license or personal ID)
- Detailed applicant information (name, address, contact details)
- Digital trademark specimen
- Goods/services description and classification
- Bona fide intent declaration
The Mandatory Attorney Requirement
Since August 3, 2019, the USPTO requires all foreign-domiciled applicants to use U.S.-licensed attorneys. This policy ensures professional representation and improves application quality.
Current Processing Timelines
Due to application surges, registration now takes approximately 12-18 months, including:
- 6-9 months for examination
- 3-month publication period
Office actions or oppositions will further extend this timeline.
Conclusion: Compliance is Paramount
With intensified USPTO scrutiny, applicants must carefully select appropriate filing strategies. Fabricating usage evidence creates substantial risks—including application rejection and potential legal consequences. Proper planning and adherence to regulations remain the only reliable path to securing U.S. trademark protection.