When you think of your typical trademark dispute between two parties, it’s customary to ask “who has the trademark?” The trademark holder is usually the party that is enforcing and policing its trademark, and going after infringers.

What happens, however, when you have two parties using the same (or similar) trademark at about the same time? Given it takes over 6 months to obtain a trademark, who wins in a trademark dispute when neither party has clearly obtained the trademark before another party started using it?

In US Trademark law, “actual use” is very important. Who ever is using first, will typically prevail in a trademark dispute. The exception is if someone filed an “Intent to Use” trademark (or ITU) application before the other person started actual use.

Before I discuss ITU’s, it’s important to understand what your typical trademark application is: An application for a trademark that you are currently using. This is called a Section 1(a) application. You must include specimens with your trademark application, which represents proof of use for each class code you are applying for. They are not easy to do, especially if you’re just starting out. They are subject to many rules (Read the Trademark Manual of Examining Procedure regarding Specimens).

If you haven’t started using your trademark yet, and cannot therefore produce the specimens, you want to consider an ITU. This is called a Section 1(b) application. This tells the USPTO that you aren’t using the trademark yet, but want to reserve the name.

An ITU costs the same, except if approved, you will need to submit a Statement of Use (or SOU) when you start using the trademark, to prove to the USPTO that you are indeed using the trademark within 6 months of the USPTO issuing you a “Notice of Allowance” (which is basically an approval). This will cost approximately $100 per class code to submit a SOU. If you are still not using the trademark within 6 months of the Notice of Allowance, you can submit a 6-month extension. And, you’re permitted to submit up to 5 extensions for a total of 3 years, before you have no choice but to submit the SOU or have your trademark go abandoned. Yes, extensions also cost about $100 per class code.

Why do an ITU versus wait until you’re actually using your trademark, to apply for a trademark?

Because if you file an ITU, your filing date will take precedence over anyone else that starts using a similar trademark before you (but after your ITU date). It basically gives you an earlier date to use against others who may want to use a “confusingly similar” trademark as yours.

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