How Long Can You Delay Using Your Trademark After Filing?

Let’s say you have a great idea for a brand name, logo, slogan, or design that you want to protect with a trademark, but you’re not using it yet. You might be wondering how soon will you need to start using it in commerce. Can you file a trademark application and then wait for two years before you launch your product or service? Or do you need to use your trademark right away to secure your rights?

The answer is not so simple. It depends on the type of trademark application you file, the evidence of use you provide, and the challenges you may face from the USPTO or other parties. In this blog post, we’ll explain the different scenarios and factors that affect how long you can delay using your trademark after filing.

an evening city street view with a digital road work sign that says "expect delays"

Let’s say you have a great idea for a brand name, logo, slogan, or design that you want to protect with a trademark, but you’re not using it yet. You might be wondering how soon will you need to start using it in commerce. Can you file a trademark application and then wait for two years before you launch your product or service? Or do you need to use your trademark right away to secure your rights?

The answer is not so simple. It depends on the type of trademark application you file, the evidence of use you provide, and the challenges you may face from the USPTO or other parties. In this blog post, we’ll explain the different scenarios and factors that affect how long you can delay using your trademark after filing.

What is a trademark use in commerce requirement?

A trademark use in commerce requirement is one of the legal conditions for obtaining and maintaining a trademark registration in the United States. It means that you must use your trademark in a bona fide and ongoing manner in connection with the goods or services that you claim in your application.

Use in commerce means using your trademark in selling or transporting your goods out of state or in providing services to customers who live outside your state. For example, if you sell t-shirts online with your trademark on them, or if you offer consulting services to clients across the country with your trademark on your website, you are using your trademark in commerce.

Bona fide use means that you are using your trademark in good faith and in the ordinary course of trade. For example, if you sell a substantial number of products or services with your trademark, or if you advertise and promote your brand consistently, you are showing bona fide use.

Ongoing use means that you are using your trademark continuously and not sporadically or temporarily. For example, if you sell your products or services with your trademark on a regular basis, or if you renew your domain name and hosting plan every year, you are demonstrating ongoing use.

What are the types of trademark applications?

There are two main types of trademark applications that you can file with the USPTO: based on use in commerce or based on intent to use.

Use in commerce application

A use in commerce application is filed when you are already using your trademark in commerce at the time of filing. You must provide both the date of first use anywhere and the date of first use in commerce for each class of goods or services that you claim. You must also submit specimens showing how you use your trademark in commerce.

For example, if you started selling t-shirts with your trademark on them online in January 2023 and shipped them to customers in different states, and then filed your application in March 2023, you would need to provide the following information:

  • Date of first use anywhere: January 2023

  • Date of first use in commerce: January 2023

  • Specimen: A picture of your t-shirts as sold to consumers with the trademark clearly appearing and being used in a branding manner (like on an attached tag or label) on the shirts; or possibly a screenshot of your website showing your trademark and t-shirts for sale

Intent to use application

An intent to use application is filed when you have a bona fide intention to use your trademark in commerce in the future but have not done so yet at the time of filing. You do not need to provide any dates of use or specimens when you file this type of application.

For example, if you have an idea for a brand name for a new line of cosmetics that you plan to launch next year, and then file your application in March 2020, you would only need to declare that you have a bona fide intention to use your trademark in commerce.

How long can you delay using your trademark after filing an intent to use application?

If you file an intent to use application, you cannot register your trademark until you start using it in commerce and submit proof of such use to the USPTO. This proof is called a statement of use (SOU), which must include the dates of first use anywhere and in commerce, as well as a specimen showing how you use your trademark.

You generally should not file an SOU until the USPTO approves your application and requests the proof of use after your mark has been published for opposition. This process can take several months or even years, depending on the complexity of your application and whether there are any objections or rejections from the USPTO examiner or other parties.

Your application is typically published for opposition for a period of 30 days. After that has concluded, the USPTO will then request evidence of use in commerce with a Notice of Allowance. You then have six months to file an SOU or request an extension of time. You can request up to five extensions of six months each, for a total of three years from the date of publication. Each extension request must include a fee and a declaration that you still have a bona fide intention to use your trademark.

For example, if the USPTO requests your evidence of use in September 2023, you have until March 2024 to file an SOU or request an extension. If you request an extension, you have until September 2024 to file an SOU or request another extension. You can repeat this process up to five times, until September 2026, which is the final deadline to file an SOU.

If you fail to file an SOU or request an extension within the six-month period, your application will be abandoned and you will lose your priority date and filing fee. You will have to start the process over again if you still want to register your trademark.

What are the risks of delaying using your trademark after filing an intent to use application?

While filing an intent to use application can give you some advantages, such as securing a priority date and preventing others from registering a confusingly similar trademark, it also comes with some risks and challenges.

First, you have to declare that you had a bona fide intention to use your trademark when you filed your application. This means that you had a concrete plan and a realistic expectation to launch your product or service with your trademark in the near future. You do not have to prove that plan or expectation when you file. However, if someone challenges your application or registration on the grounds that you lacked such intention, you may then have to provide evidence of your preparations, such as market research, product development, business plans, contracts, or advertising materials.

Second, you have to maintain your bona fide intention to use your trademark throughout the application process. This means that you cannot change your mind or abandon your plans to use your trademark after filing. If someone challenges your application or registration on the grounds that you lost or lacked such intention, you may have to provide evidence of your ongoing efforts, such as updates, modifications, or improvements of your product or service.

Third, you have to start using your trademark in commerce within a reasonable time after filing. This means that you cannot delay or postpone using your trademark indefinitely or for an unreasonable period. If someone challenges your application or registration on the grounds that you delayed or lacked such use, you may have to provide evidence of your reasons for the delay and your readiness to use your trademark.

Conclusion

Filing a trademark application does not mean that you can wait for two years before using your trademark in commerce. Depending on the type of application you file, you may have to provide proof of use sooner or later. However, even if you file an intent to use application, which gives you more flexibility and time, you still have to show that you had and maintained a bona fide intention to use your trademark and that you did not delay using it for an unreasonable period.

We hope this blog post has helped you understand how long you can delay using your trademark after filing and what factors affect your rights and obligations. If you need any help with your trademark application or registration, please contact us today. We are here to help you with all your trademark needs.