IP Tech Knowledgy

When filing an Intent-to-Use (ITU) trademark application for words that may seem descriptive, consider additional strategies so you can retain an early priority date. Descriptive terms cannot benefit from the trademark rules giving the applicant a “constructive” date of first use as of when it files the application.  Relying on only an ITU application may impair your future protection.

An ITU application’s main benefit is providing a priority date based on the application date, even if filed before the mark is used. However, that benefit only applies to applications which ripen into a registration on the Principal Register of the US Patent and Trademark Office. Descriptive marks without a logo are only registerable on the less-desirable Supplemental Register. Marks on the Supplemental Register are not entitled to use the “intent to use” process and must already have been used in commerce.  

A problem arises if an applicant files for the Principal Register based on an intent to use, believes it is entitled to the early constructive filing date, but then must convert the application to the Supplemental Register because the PTO determines the mark is descriptive. That applicant’s priority date will be later than expected because it did not initially allege use of the mark when it was instead hoping its application would avoid being rejected for descriptiveness.

There are at least three solutions for this situation. If an applicant believes its mark might ultimately be deemed descriptive, it should segregate out some goods or services in its application which it believes it will use first, so that as soon as the items are used, it can file an Amendment to Allege Use (AAU), so as to gain that AAU filing date as its priority date. Another option would be to file for the logo right away because a distinctive logo would carry the entire mark to registration on the Principal Register, so long as the applicant disclaims exclusive rights in the descriptive terms that are also part of the mark. Another option would be to divide the application once the applicant has used a portion of the goods and services, and file and AAU for that portion so that some of the application progresses to registration.  

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com