A trademark application filed on an intent-to-use basis confers no right of enforcement prior to actual use of the trademark with the goods covered by the application. That is, without actual commercial use of the trademark in U.S. commerce, an applicant of an intent-to-use trademark application has an unenforceable trademark and should not claim trademark infringement. Use in commerce occurs when branded goods are transported or sold across state or federal borders and is a requirement to achieve federal trademark registration in the U.S.
Let us see why that is.
Among the various ways a U.S. trademark application can be filed, an applicant can elect to file its application based on a bona fide intention to use the mark. This is a highly useful strategy when an applicant wants to reserve rights in a trademark but has not yet commenced production or otherwise brought products to market. The primary benefit of filing this way is that once use in interstate commerce occurs and the applicant files the required statement of use with the U.S. Patent and Trademark Office (USPTO), the resulting trademark registration provides the owner with the exclusive right to use the trademark with constructive use of the trademark, or priority of right, extending back to the filing date of the application. In other words, in an eventual priority contest with another party that adopts a similar trademark, the applicant of an intent-to-use application should be able to assert its application filing date as its date of first use of its trademark nationwide as compared with whatever date of first use its opponent claims.
On the other hand, since the test for trademark infringement is whether there is a likelihood of confusion in the minds of consumers, without actual use of both trademarks in the marketplace, the owner of the intent-to-use trademark application that is not yet using the trademark does not have a legitimate basis to assert trademark infringement.
Within this context, it is also important to consider that trademark rights arise in the U.S. through the simple commercial use of a trademark such as selling and transporting goods bearing the trademark. There is no requirement to register a trademark in order to generate these rights. See FAQs. The rights that arise through simple use are referred to as common law rights and are principally defined by the timing of the first commercial activities and the geographic footprint of these activities. That is, common law trademark rights are limited to the area in which the owner conducts commercial activities and their strength against others is measured by whether or not their first use occurred before or after another party’s first use of its trademark.
With this background in mind, let us consider the relative strength of an intent-to-use trademark applicant against a third party for trademark infringement when the third party is using its trademark and the applicant has not yet filed a statement of use with the USPTO. As we said above, if the applicant has not actually used its trademark yet, there is no reasonable basis to assert the use by the third party of its trademark causes consumer confusion because there is only one trademark being used. In other words, an applicant of an intent-to-use application, without more, cannot succeed in a claim for trademark infringement in the U.S.
If, however, the third-party user began its use after the filing date of the intent-to-use application, there is a reasonable probability that applicant of the intent-to-use application will eventually put its trademark into interstate commercial use, make the required filing at the USPTO, and proceed to registration. If and when this occurs, the applicant of the intent-to-use application will be able to assert priory of right over the third-party user because the applicant will be entitled to the filing date of its application as constructive use of its trademark nationwide, which will trump whatever common law rights the third-party user generated though its use of its own trademark.
Contrast this result with a situation where the third-party user began its use prior to the filing date of the intent-to-use application. When this happens, barring an extraordinary circumstance where the intent-to-use applicant alleges that it had interstate commercial use prior to the filing date of its intent-to-use application, the eventual registration to issue from the intent-to-use application will not have priory of right against the third-party user and the rights represented by its registration exclude any right of enforcement against the third-party user in the territory where commercial use was made prior to the filing date of the intent-to-use application. This result does not depend on whether the third-party user had interstate commercial use of its trademark; it is immune from trademark infringement claims by the registration resulting from the intent-to-use application wherever it had commercial activities under the trademark.