AI, Bulk TM Apps Might Be Spurring Intent-To-Use Increase

Sterne Kessler’s Dana Justus spoke to Law360 on the recent increase of intent-to-use (ITU) trademark applications filed at the U.S. Patent and Trademark Office (USPTO).

With an increase in trademark applications, many applicants are filing multiple ITU applications. Justus commented, “Perhaps [companies are] taking that approach to file for a larger pool of ITU applications to see which eventually get through because it is more likely that you’ll encounter a third party or another issue with at least one or so of those candidates, given the amount of trademarks that are already on the register.” She continued, “The increase-your-odds strategy might be playing a part in the larger number of ITU filings.”

Justus noted that increased third-party filings are a major reason for applicants turning to ITUs, but this can eliminate secrecy surrounding branding efforts. She explained that ITUs can cost more than use-based filings, particularly if an applicant needs to request an extension for filing a statement of use, which is filed to show the eventual use in commerce of a mark.

She also explained that statement of use delays can be stressful for clients waiting for their registration certificates, but she advises clients not to worry too much because the delays won’t affect the priority date for their trademarks. “It’s not a significant pain point in our practice and for our clients, but we are always enthusiastic about any pendency reduction efforts that the [USPTO] is making.”

Justus said she’ll be interested to see what share of the ITU filings will be abandoned and how many get “perfected,” which means applicants demonstrate their use and then the trademarks get registered. She said that high abandonment rates would support the notion that applicants are filing many applications to see what sticks and then only going forward with a few candidates that they actually end up using.