3 Things to Know About an ‘Intention to Use’ Trade Mark Application
If you are in the early stages of setting up your business but wish to protect your intellectual property (IP) as soon as possible, your trade mark application may be an ‘intention to use’ application. To help you better understand what this means for your trade mark application, this article will take you through three key things to know about intention to use trade mark applications.
1. What is ‘Intention to Use’?
When applying for a trade mark, you must meet several critical criteria to meet the legislative requirements for a trade mark application.
One of these requirements is that you are currently using or intend to use your trade mark in relation to the classes of goods and services that you select in your trade mark application. Demonstrating intention to use your trade mark is important because it prevents people from hoarding trade marks.
Trade mark classes refer to categories of different goods and services. Australia uses the internationally recognised Nice registration system which divides 45 classes into 34 goods and 11 services. When making your trade mark application, the trade mark class you select is important. This is because your trade mark is only protected under the goods and services classes you have chosen.
If you apply for trade mark registration under too many classes, your application may be subject to a ‘non-use’ action. Because of this, it is important that you do not apply for your trade mark under a goods and services class that you have no intention of using it for.
2. Demonstrating Intention to Use
To demonstrate intention to use your trade mark, there are a number of pieces of evidence that you can provide to support your claim. For example, you may wish to provide business plans evidencing the intention to use your trade mark. Similarly, product launch plans or market research may also be useful in showing intended use.
Other evidence showing intention to use your trade mark may include evidence of financial investment into your trade mark. For example, proof of money being invested into marketing materials that make use of your trade mark. This may demonstrate intended use.
Suppose you apply for a trade mark and do not use it. In this case, your trade mark risks being removed from the trade mark register for non-use. Additionally, if you register a trade mark with no intention of using it, your trade mark will be considered a bad faith trade mark registration. This can have a severely negative impact on your business’ reputation.
3. Use in the United States
If you are filing a trade mark application in the United States, intention to use becomes a more important concept. While there are many parallels between the Australian and American trade mark application processes, one of the primary differences is the ‘nomination of use’ component of your trade mark application. If you already use your trade mark, you will need to nominate ‘use in commerce’. On the other hand, if you have not yet started using your trade mark but have plans to in the future, you will need to nominate ‘intent to use’.
Trade mark applications that nominate intent to use are both more expensive and require additional forms. You must provide evidence that your trade mark is market-ready instead of having the mere idea that you will one day use the trade mark.
If you are using your Australian trade mark as the basis of your American trade mark application, this is a primary distinction you will need to consider. As well as evidence that you have prepared your trade mark for use, you will need to provide a sworn statement attesting to your intention. This statement, referred to as an ‘Allegation of Use’, will also require you to explain how you intend to use the trade mark.
If you are hoping to register your trade mark as early as possible but are not yet using your trade mark, your application may be an ‘intention to use’ application. Some key things to know about intention to use applications include:
- what intention to use is;
- how you can demonstrate intention to use; and
- the meaning of intention to use in the context of American trade marks.
Frequently Asked Questions
When applying for a trade mark, there are a number of key criteria that you must meet. One of these requirements is that you are currently using or intend to use your trade mark in relation to the goods and services classes you select in your trade mark application. You will need to provide evidence demonstrating your intention to use your trade mark.
A bad faith trade mark application relates to any trade mark that you seek without good intentions. For example, people who identify trade marks overseas and register them in Australia to sell the trade mark to the overseas owners are not filing for an application in good faith. To prevent bad faith trade mark applications, you need to demonstrate intention to use your trade mark when making your application.