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[Santoro]

Hi i am currently filling the US trademark form and everything is going fine. I simply have a question regarding the option to write if my trademark is already in use or not.

I can lauch my trademark or not depending on what is the best option

So my question is: what are the pros/cons of choosing one option or the other (trademark already in use or not)?


My product to trademark is a matchmaking website with an original twist.

Thanks

[JSonnabend]

You don't really have an "option" of which to choose, 1(a) or 1(b).  If your mark is in bona fide use, then by all means, use the 1(a) basis.  If not -- and token uses don't count -- then you have to file based on intent to use (1(b)) or wait until a bona fide use.

- Jeff

[Santoro]

Thanks for your answer but let's say i could do both. For example i could
1)start doing business with my product name for a year and then start the trademark process after
or i could
2)fill the trademark form right away and fill it by saying my product name is not yet used in business

I am wondering what are the pros and cons of choosing one of those options.

Thanks

[JSonnabend]

You are correct, you have the options of waiting for bona fide use before filing or filing before such a use on an "intent to use" (ITU) basis.  I didn't mean to overstate the lack of "choice".

The advantage of filing an intent to use application is chiefly that it "puts your stake in the ground" earlier, potentially beating others to a claim in the mark.  Once your registration ultimately issues, your legal date of first use will be the ITU filing date, not the actual date of first use.

The downside to the ITU route is added cost.  You will have to file a statement of use (or amendment to allege use), which requires additional work and additional fees.  If you don't have use within the first six months of receiving your notice of allowance, you can file a six month extension request, which also means more filings and more fees.  You can receive up to five extensions (for a total of three years from your notice of allowance date), each time paying the required fee.

The advantage of the actual use route is simply the avoidance of the extra work and fees, albeit at the risk of someone jumping in front of you in the Trademark Office.

- Jeff