“DIBS!” We all learned what “dibs” are as children. It’s the classic “I was here first.” But did you know that “dibs” are also a very important part of trademark law? As in, “if you are not yet using your trademark in commerce but still want to call ‘dibs’ on the mark, there is a way to do that.” Let’s dive in and see how this childhood lesson can apply to your trademark. 

In-Use Trademark Applications 

One of the most common types of trademark application is the standard “In-Use” application, which is filed under §1(a) of the Lanham Act, 15 U.S.C. §1051 et seq. These applications contain everything required by the USPTO for a complete trademark application, including a Declaration swearing to and a specimen (or “proof”) showing that the Owner of the mark is using the mark in commerce in the way that is claimed in the application.   

First to File Trademark Applications 

But what if you are not yet using the mark in commerce? Well, in most countries other than the United States, you’re in luck – these countries have a system called “first to file,” which means that anyone can file the trademark application regardless of whether they are using the mark in commerce or not. In the United States, however, if an Owner of a mark is not yet using the mark to sell its Goods or Services, the Owner must file what is called an “Intent-to-Use” (“ITU”) or a §1(b) (sometimes also abbreviated to “1B”) trademark application.   

A §1(b) trademark application is the U.S. trademark legalese of “calling dibs” on a mark. For example, if the Owner of the mark ABC123 for candles wants to file an application for this mark but is not yet using the mark to sell its Goods or Services in the U.S. yet, the Owner would file a §1(b) trademark application, declaring that Owner has a bona fide intent to use the mark in commerce to sell its candles. This allows the wait time for the beginning of examination of the application to go ahead and start running.   

Once the application has been examined by the USPTO and all potential issues with the application have been resolved, the Trademark Examiner will issue a Notice of Allowance in the §1(b) application. This Notice of Allowance basically says, “It’s time to prove that you, Owner, are using the mark of ABC123 to sell candles in the United States.” Owner must then submit a Statement of Use (“SOU”) or an Amendment Alleging Use (“AAU”), which is USPTO-speak for photographic evidence that Owner is indeed selling candles in the U.S. using the mark of ABC123, along with additional fees and Declarations. With the §1(a) application, this evidence is submitted along with the original application. 

If the Notice of Allowance issues, but the Owner is still in the process of securing manufacturers or delivery services for its Goods, the Owner can submit a Request for Extension of Time to File the SOU or AAU. These requests are made in 6-month intervals. A total of five (5) such requests may be made in any one trademark application. This means that, after the Notice of Allowance issues for the ABC123 mark, the Owner has up to 3 years to submit the specimen that shows that Owner is using the mark in commerce, provided that Owner has been diligent in submitting each of the 5 Requests for Extensions of Time to the USPTO, along with the required fees and declarations. Each extension is for its own separate 6-month period, and the request for the next extension must be submitted during the current 6-month period. This means that an Owner who has let an application lapse by not filing a timely Request for Extension of Time will have to submit a new trademark application and start the whole examination process from scratch. So, you can see that timing truly can be everything when it comes to your trademark application!   

Need a Trademark Attorney? 

Before you decide to call “dibs” on your wildly creative mark, be sure to have your ducks in a row – and a good trademark attorney on your side. Sand, Sebolt & Wernow, will guide you through the process of registering your unique trademark. Contact us today.