Often, companies seeking a pre-determination as to whether a new brand is registerable as a US Trademark will apply for a trademark before they begin using it in commerce. These applications, commonly referred to as Intent to Use (ITU) or Section 1(b) applications, are reviewed for conflicts and other requirements before evidence of use is submitted by the applicant. If an applicant filing an ITU trademark application expects to use the brand across a variety of goods and services, they may choose to file in multiple trademark classes. However, after being allowed by the USPTO, the applicant must submit their evidence of use across ALL classes before the deadline to allege use. If the applicant has only established use in some, but not all classes, they must divide their application. By doing so, the applicant must be diligent to make sure part of their application avoids abandonment.
A Request to Divide is usually accompanied with an Allegation of Use in at least one of the applied for classes. The Allegation of Use must include a specimen – usually one or more photos of the goods and/or services bearing the applied for mark. For classes which the applicant is not yet prepared to submit specimen, the applicant must pay the Allegation of Use fee, Request to Divide fee, AND application fees related to those classes the applicant wishes to divide from the original application. Failing to pay the new application fees in each class will result in abandonment of the divided classes which can only be revived by paying these fees and filing a petition to revive with the corresponding petition fee. There are timing requirements for petitions which are strictly enforced and may result in the permanent abandonment and require an entirely new application with a new priority date.
If you’re considering protecting a new brand with a trademark, but want to make sure it will be allowed first, ITU applications are a great way to begin. If you’re planning on using and protecting your brand in a variety of classes, it may be helpful to strategize with a Trademark Attorney beforehand. Knowing critical dates in advance can help you prepare to avoid having to divide your application in the first place. If you do have to divide your application, it may be a good time to hire an attorney to help you avoid abandonment or unnecessary revival fees. Since you’ll need to prepare important documents and critical dates are crucial to protecting your brand with a trademark, you should consider hiring a trademark attorney. If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.