What You Need to Know About Intent-to-Use Trademark Applications

Catchy phrases, viral trends, and memes can quickly capture attention, but using them in your business can be risky. While these phrases may seem like the perfect way to engage with your audience, it’s important to understand the potential legal complications. Can you claim ownership of a viral phrase for your business? And if so, how?

Can Common Phrases or Viral Expressions Be Trademarks?

Yes, common phrases or viral expressions can be trademarked — but only if they are used in connection with a business, product, or service. Trademarks are all about distinguishing your business from others. So, if you see a viral phrase and think, “I want to use that for my brand”, you can file what’s called an “intent to use” application. This application is meant for businesses that haven’t yet started using the phrase but intend to in the future. However, you need to specify what category or industry you’re planning to use it in. You can’t simply file an application for the phrase without stating how it will be used.

Intent to Use Trademark Applications: What Does That Mean?

An “intent to use” application allows you to reserve a trademark for a business or product that you haven’t launched yet. When you file, you’ll describe the product or service you plan to offer, and the goods or services must be clearly defined — no vague descriptions allowed. This gives you time to build your business while securing rights to the name you want.

Here’s where it gets interesting: You don’t need to have a product for sale yet. You don’t need a website up and running. You don’t even need to have made your first sale. You simply need to file with the intention of using the phrase in commerce.

The application process can take a while, often 9–12 months, but during that time, you can get your business set up and start using the phrase. Once you are ready, you’ll need to provide proof that you’re using the phrase in commerce (for example, a product listing, website, or marketing materials).

The LeBron James “Taco Tuesday” Case: A Cautionary Tale

This brings us to a famous example: LeBron James tried to trademark the phrase “Taco Tuesday” for use in his business. However, this phrase was already widely used by countless restaurants, families, and individuals. The question that arose was: Can you trademark a phrase that is already so commonly used?

This scenario highlights a key challenge: While a phrase may seem like a great business tool, if it’s too generic or widely used, it may not be eligible for trademark protection. The same rules apply when filing an intent to use application — if your phrase is too common or descriptive, you may not be able to claim exclusive ownership.

The Intent to Use Application Process: Key Takeaways

When you file an intent to use trademark application, you’re essentially reserving the rights to a name for future use. This means you can file early, even before your business is fully operational. Here’s how it works:

• Comprehensive Search: Before filing, make sure to run a thorough search to check if your phrase is already being used in a similar way by another business.
• Filing the Application: Once you’re confident the phrase is available, file your application with the U.S. Patent and Trademark Office (USPTO). You’ll need to describe the goods or services you plan to offer.
• Proof of Use: Unlike a standard trademark application (where you must show the phrase is already in use), an intent to use application gives you time to build your business and start using the mark. You’ll need to provide proof of use before your registration is granted.
• Adjustments and Modifications: If you change your business direction or want to use the mark for different products or services, you may need to file a new application. It’s important to be clear from the start about what you intend to use the mark for.
• Wait for Approval: Once your application is filed, the USPTO will review it. If there are no issues, your trademark will be registered. However, there may be a period of opposition where others can challenge your use of the trademark, especially if they believe it’s too similar to their own.

Protecting Your Brand: Why Planning is Key

It’s crucial to plan ahead when filing an intent to use application. Here’s why:

• Trademark Classes: The USPTO divides trademarks into 45 categories (called “classes”) based on the type of product or service. It’s important to accurately categorize your goods or services to ensure proper protection. If you expand into other areas in the future, you may need to file new applications for different classes.
• Avoiding Mistakes: Once you file your application, you generally can’t change the description or category of goods/services without filing a new application. This means you need to carefully consider your brand’s future growth and any potential changes to your business model.

When Can a Trademark Be Refused?

Even with an intent to use application, your trademark can be refused for several reasons, including:

• Lack of Proof of Use: If you don’t provide adequate evidence that the phrase is being used in commerce by the required deadline, your application could be rejected.
• Confusing Similarity: If your phrase is too similar to an existing trademark, it can be rejected.
• Descriptive or Generic: Phrases that are too descriptive, generic, or widely used (like “Taco Tuesday”) may not be eligible for protection.

How Can a Company Plan Ahead for Future Products or Brands?

To effectively plan for new products or marks, businesses can file intent to use applications to reserve a name and protect their brand. The earlier you file, the earlier you secure your rights to the name, which can help you avoid potential conflicts with others who might file for similar marks later.

Conclusion: The Value of an Intent to Use Application

If you’re launching a new product or service and want to protect your brand, filing an intent to use trademark application is an effective strategy. It gives you time to prepare while securing the rights to your chosen name. However, the process isn’t without risks, and it’s important to ensure your phrase is unique and properly classified.

At the same time, be mindful that the trademark process can take time, and your phrase may become commonplace before the registration is finalized. Plan ahead, work with a trademark attorney, and always be sure that you’re using the mark in commerce as soon as possible to secure your rights.