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Federal Trademark Law Amended To Create “Intent-To-Use” Registration

January 1989

On November 16, 1988, President Reagan signed The Trademark Law Revision Act, which will take effect one year from the date of signing, on November 16, 1989.

Although the Act makes numerous minor and technical changes to the Lanham Act (the federal trademark statute), by far the most significant amendment is the creation of an “intent-to-use” system, reversing the time-honored principle of American trademark law which required that a symbol must be used in commerce before there can be registration. This requirement has led to extensive litigation over the definition of both “use” and “commerce.” Under the existing rule, companies anxious to get a jump on the registration process, and eager to flush out formal opposition before a large investment is made in a mark, frequently sought to arrange a “token use” to clear the way for registration.

The Trademark Revision Act amends the Lanham Act to create an “intent-to-use” system which will allow the reservation of a trademark or service mark long before it is used in commerce. An applicant may file an application to register a mark stating a “bona fide intention” to use that mark in commerce and identifying the goods on which the mark will be used. The mark is then examined by the Patent and Trademark Office and subjected to the usual opposition procedure. Assuming the mark clears this process, a Notice of Allowance is issued. The applicant then has six months to make use of the mark in commerce and submit a Statement of Use to the Patent and Trademark Office (which has the authority to conduct a limited re-examination), following which the mark will be registered.

The six month period may be extended for a second six months if the applicant submits an affidavit stating its continued bona fide intention to use the mark in commerce. Following the expiration of the second six month period, the applicant may obtain an extension for up to another two years on a showing of good cause. Thus, a trademark applicant may precede actual use by up to three years from the date of the Notice of Allowance. One a mark is used and registered, its owner obtains nationwide “constructive use” priority dating back to the date of its application for registration.

TLB Comment: Implementation of an intent-to-use system is a substantial and far-reaching change in the basic theory of U.S. trademark protection. The change conforms U.S. trademark law to the model used by almost all other nations in the world. The U.S.’s adoption of an intent-to-use system is a major step toward eventual U.S. membership in an international filing pact, such as the already existing Trademark Registration Treaty, which went into effect in 1980. Under such a treaty, the filing of a trademark application with the organization would have the same effect as if the applicant had filed for registration in each of the treaty’s member nations, greatly reducing the cost and complexity of obtaining multinational protection for trademarks.