Intent-to-Use Applications: Claiming a Trademark Before You Sell a Thing
By Casey Scott McKay ·
A Section 1(b) intent-to-use application lets a business claim a federal filing date for a mark it has not yet used, and under 15 U.S.C. § 1057(c) that filing date becomes nationwide constructive-use priority the moment the mark registers. This article explains what the Trademark Law Revision Act of 1988 was built to fix, what the verified statement of bona fide intent actually commits an applicant to, and why the standard is objective and documentary rather than a question of sincerity. It works through the leading authorities — Lane, Commodore Electronics, Berger v. Swatch, and Kelly Services — and shows how a padded identification of goods can void an application the applicant otherwise deserved. It maps the statutory clock from notice of allowance through the 36-month outer limit, explains the amendment to allege use and the blackout period, and details the anti-assignment rule in Section 10 that has voided registrations after founders reorganized and after lenders took collateral. It closes with the questions the courts and the Board have not settled, including whether a partial failure of intent kills an entire application.
IP and Technology > Trademarks | Article | Published 27 July 2025 - Updated 12 January 2026 | Casey Scott McKay - marksy.us
Summary. A Section 1(b) intent-to-use application lets a business claim a federal filing date for a mark it has not yet used, and under 15 U.S.C. § 1057(c) that filing date becomes nationwide constructive-use priority the moment the mark registers. This article explains what the Trademark Law Revision Act of 1988 was built to fix, what the verified statement of bona fide intent actually commits an applicant to, and why the standard is objective and documentary rather than a question of sincerity. It works through the leading authorities — Lane Ltd. v. Jackson International Trading Co., Commodore Electronics v. CBM Kabushiki Kaisha, M.Z. Berger & Co. v. Swatch AG, and Kelly Services v. Creative Harbor — and shows how a padded identification of goods can void an application the applicant otherwise deserved. It maps the statutory clock from notice of allowance through the 36-month outer limit, explains the amendment to allege use and the blackout period, and details the anti-assignment rule in 15 U.S.C. § 1060(a)(1) that has voided registrations after founders reorganized and after lenders took collateral. It closes with the questions the courts and the Board have not settled, including whether a partial failure of intent kills an entire application.
Keywords: intent-to-use application · section 1(b) · bona fide intent · statement of use · notice of allowance · constructive use priority · section 7(c) · amendment to allege use · extension of time to file · m.z. berger v. swatch · lane ltd. v. jackson · kelly services v. creative harbor · itu assignment restriction · void ab initio · 36-month deadline · trademark filing date · uspto prosecution · trademark priority
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