What's the difference between the use-in-commerce and intent-to-use basis?

Intellectual Property Offices (IPOs) in most of the countries do not make any distinction between 'use in commerce' and 'intent to use' trademark applications. The United States Patent & Trademark Office (USPTO) is one exception to this claim and any trademark application filed in the US needs to specify whether it is filed as 'used in commerce' or 'with an intent to use'.

On the one hand, 'use in commerce' filing basis refers to the situation in which the applicant already uses the trademark in commerce. In other words, this trademark can be found on actual products / services offered as well as on promotional materials used to support the sales. On the other hand, 'intent to use' trademark application refers to a situation in which the applicant is merely starting their business, or planning an expansion into the US, and no products/services bearing the trademark to be registered have been sold yet.

The practical differences between these two forms of filing bases relate to cost and timing. Essentially, all trademarks filed in the US need to prove the actual use in commerce in order to gain full scope of the legal protection. For the 'use in commerce' filing basis, associated evidence can be submitted during the process of filing the initial trademark application and there is no extra cost. Conversely, the applicants filing their trademarks 'with an intent to use' need to demonstrate the use in commerce once the trademark application passes the formal examination stage and opposition period. There is also an extra government fee and associated service fees may be charged by the trademark representative. In practice, this 'proof of use in commerce' for 'intent to use' trademark application needs to demonstrated approximately 1 year after the initial filing date, and this period can be extended for an additional fee.

While it may seem that filing the trademark application with a proven use in commerce represents the preferred option, the general practice suggests otherwise and there is a very good reason for it. The protection enabled by trademark registration starts from the date of filing the application and hence, securing the uniqueness of the brand from day 1 may be a recommended option for business owners who merely wish to launch their new business or who intent to expand their product/service offerings into the US.

More information about the difference between 'use in commerce' and 'intent to use' filing basis for trademark applications can be found in our Trademark Academy.