A trademark is a “word, phrase, symbol or design, or a combination thereof, that recognizes and distinguishes the source of the goods of one party from those of others, as per the definition of the United States Patent and Trademark Office (USPTO) definition.
Though the above-mentioned definition ascribes to goods, trademark registration is also applicatory to the noticeably distinct identification of services. The aspect in which services may be deemed to be “used in commerce” is subject to a marginally different standard.
With respect to goods, use in interstate commerce generally involves sending the goods across state boundaries with the mark displayed on the goods or their packaging.
While in the case of services, use in interstate commerce implicates actually offering the service to customers in another state or providing a service that influences interstate commerce as the customer base frequents the services, such as hotels, gas stations, and restaurants.
The term actual use connotes- the first to use the trademark on a product that is delivered in the market place.
While, in the case of a service mark, the first to use the mark in connection with advertising or marketing of a service available to the public.
Whereas, in the case of intent to use—the first to file intent-to use application:
(1) The applicant files the application before the trademark is actually used by another party and
(2) The applicant later puts the mark into actual use and completes the registration process by filing an additional form and paying an additional fee.
The elementary distinguishing feature between an actual use and intent to use in commerce application while filing for a trademark registration is while answering the first question i.e. basis for filing , one should choose yes under intent to use. There is no requirement to supply specimens with an intent-to-use application but allegation of use has to be included.
“In Use “or “Intent to Use”
USPTO trademark filings are initiated either on the basis of a trademark’s already being “in use” or on the basis of “intent to use.”
According to the USPTO website, the essential distinguishing between these two filing bases is whether the applicant has used the mark on all the goods or services. If the mark has already been used in commerce, the filing may be pursuant to the “use in commerce” basis. If it has not yet been used in commerce—but is intended to be used in the future—the filing must be done on the basis of “intent to use.”
The expression “use in commerce” connotes the bona fide use of a mark in the ordinary course of trade, and not made solely to reserve a right in a mark. A mark shall be deemed to be in use in commerce—
(1) On goods when- it is allocated in any manner on the goods or their containers or the displays affiliated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce, and
(2) On services when - it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in India and a foreign country and the person rendering the services is indulged in commerce in connection with the services.
Though there is no obligation that a trademark should be actually used by the applicant prior to filing a trademark application, there is a requirement that the person or enterprise seeking to obtain rights in a trademark should institute that the mark is being “used in commerce” before obtaining trademark registration.
The elementary distinguishing feature between these two filing bases is that whether one has used the mark on all the goods or services. If someone has already used one’s mark in commerce, he may file under the "use in commerce" basis.
Whereas, if someone has not yet used their mark in commerce, but intend to use it in the future, he must file the application under the "intent to use" basis. An "intent to use" basis will require filing an additional form and fee, which is not the case that if one files under "use in commerce, but intend to use it in the future, one must file his application under the “intent to use” type of filing.
The merit of filing an intent-to-use (ITU) application is that the filing date will serve as the date of one’s first use of the mark— presuming one can put the mark in actual use and take the other steps necessary to get the mark placed on the federal trademark register.