Skip to content
call today
949.216.3070
  • Home
  • About
    • Brian P. Kinder
    • Michael S. Doll – Of Counsel
  • Protection
    • Trademark Protection
    • Trademark Infringement
    • Comprehensive Trademark Search
    • Trademark Application – Intent-to-Use Based
    • Response to Trademark Office Action
    • Oppositions / Cancellations
    • Irvine Trademark Lawyer
    • Riverside Trademark Lawyer
    • San Diego Trademark Lawyer
    • San Bernardino Trademark Lawyer
  • Litigation
    • Copyright Infringement
    • Domain Name Disputes
    • False Advertising
    • Franchise Disputes
    • Trade Secret Misappropriation
    • Trademark Cancellations
    • Trademark Infringement
    • Trademark Oppositions
  • Flat Fee Filings
    • Assignments
    • Cease and Desist Letter
    • Comprehensive Trademark Search
    • In-House Trademark Clearance Search
    • International Trademark Protection
    • Oppositions / Cancellations
    • Registration Renewal – Section 8&15
    • Registration Renewal – Section 8&9
    • Request for Extension of Time to File Statement of Use
    • Response to Trademark Office Action
    • Statement of Use
    • Trademark Application – Already in Use
    • Trademark Application – Intent-to-Use Based
    • U.S. Copyright Application
  • Attorney Referrals
  • Experience
    • Client Testimonials
    • Industry Groups
    • Case Victories
  • Careers
  • Contact Us
Menu
  • Home
  • About
    • Brian P. Kinder
    • Michael S. Doll – Of Counsel
  • Protection
    • Trademark Protection
    • Trademark Infringement
    • Comprehensive Trademark Search
    • Trademark Application – Intent-to-Use Based
    • Response to Trademark Office Action
    • Oppositions / Cancellations
    • Irvine Trademark Lawyer
    • Riverside Trademark Lawyer
    • San Diego Trademark Lawyer
    • San Bernardino Trademark Lawyer
  • Litigation
    • Copyright Infringement
    • Domain Name Disputes
    • False Advertising
    • Franchise Disputes
    • Trade Secret Misappropriation
    • Trademark Cancellations
    • Trademark Infringement
    • Trademark Oppositions
  • Flat Fee Filings
    • Assignments
    • Cease and Desist Letter
    • Comprehensive Trademark Search
    • In-House Trademark Clearance Search
    • International Trademark Protection
    • Oppositions / Cancellations
    • Registration Renewal – Section 8&15
    • Registration Renewal – Section 8&9
    • Request for Extension of Time to File Statement of Use
    • Response to Trademark Office Action
    • Statement of Use
    • Trademark Application – Already in Use
    • Trademark Application – Intent-to-Use Based
    • U.S. Copyright Application
  • Attorney Referrals
  • Experience
    • Client Testimonials
    • Industry Groups
    • Case Victories
  • Careers
  • Contact Us
call today
949.216.3070
  • About
    • Brian P. Kinder
    • Michael S. Doll – Of Counsel
    • Locations We Serve
  • Our Services

    Protection

    Main Menu
    • Trademark Protection
    • Copyright Protection
    • Patent Protection
    • Trade Secret Protection
    • Advertising and Internet Law
    • Domain Name Disputes
    • Franchise and Licensing
    • International Trademarks
    • Intellectual Property

    Litigation

    Main Menu
    • Trademark Infringement
    • Trademark Oppositions
    • Trademark Cancellations
    • Copyright Infringement
    • Trade Secret Misappropriation
    • False Advertising
    • Domain Name Disputes
    • Franchise Disputes

    Flat Fee Services

    Main Menu
    • Trademark Search
    • Trademark Application
    • Office Action Response
    • Statement of Use
    • Renewal of Registration
    • Assignment of Trademark
    • Cease and Desist Letter
    • Oppositions / Cancellations
    • U.S. Copyright Application
    • International Trademark Protection
  • Attorney Referrals
  • Experience
    • Testimonials
    • Industry Groups
    • Case Victories
  • Careers
  • Contact Us
  • Published on January 2, 2020
  • at 10:48 am

Can you convert an ‘actual use’ trademark application to an ‘intent to use’ trademark application?

  • Brian Kinder Posted by Brian Kinder

Since this question comes up quite a bit, we thought we would post our answer to an online submission from a ways back. 

Q: Can I have an ‘actual use’ application converted to an ‘intent to use’ application?: I filed an ‘actual use’ trademark application, thinking that the way I used the trademark was sufficient to be considered actual use. (Yes, I know I should have had a trademark attorney file the application.) Anyway, as it turns out, I have found out that I am not yet using it in a way that qualifies to be considered ‘actual use.’ So the question: Is it possible for a trademark attorney to have my ‘actual use’ application converted to an ‘intent to use’ application? Or do I have to start over, just filing a new intent to use application? Thank you!

TKLG’s answer: Yes, you can convert a use based application (Section 1a) to an intent-to-use application (Section 1b). Look up the Trademark Manual of Examining Procedure (TMEP) online and then look at Section 806.03(c) Amendment From §1(a) to §1(b). It explains everything in detail and I have copied and pasted it below. Keep in mind, however, that this often times does not solve the problem because the issue is usually more substantive. You really should speak with a tm lawyer to sort this out. It takes many months to get an application through to registration and if you have to start over you want to do it sooner rather than later. Best of luck and here is the text of TMEP Section 806.03(c):

If a §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce when the application was filed, the applicant may substitute §1(b) as a basis. The Office will presume that the applicant had a continuing valid basis, because the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. 2.35(b)(3).

When amending from §1(a) to §1(b), the applicant must submit a verified statement that the applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods/services since the application filing date. 15 U.S.C. 1051(b)(3)(B); 37 C.F.R. 2.34(a)(2).

See TMEP §806.03(j) regarding amendment of the basis after publication.

See exchange at:  http://www.avvo.com/legal-answers/can-i-have-an–actual-use–application-converted-t-1615466.html

Facebook
Twitter
LinkedIn
Pinterest
PrevPreviousBrian Kinder Ranked No. 1 Trademark Registration Lawyer And Trademark Infringement Lawyer in California!
NextWhen is an Alteration a “Material” AlterationNext
Brian Kinder
Brian Kinder
Latest Legal Updates
  • Can Intellectual Property Be Stolen?

    Can Intellectual Property Be Stolen?

    January 19, 2023
  • How Important Is Intellectual Property?

    How Important Is Intellectual Property?

    November 25, 2021
  • What Are The 6 Types Of Intellectual Property?

    What Are The 6 Types Of Intellectual Property?

    October 26, 2021
  • Top 20% Of Most Active Trademark Litigation Firms in the United States!

    Top 20% Of Most Active Trademark Litigation Firms in the United States!

    January 22, 2021
  • Q & A: Can a name and a logo be filed under one trademark application?

    Q & A: Can a name and a logo be filed under one trademark application?

    August 21, 2020
  • Brian Kinder Continues to Be Ranked No. 1 Trademark Registration Lawyer And Trademark Infringement Lawyer in California!

    Brian Kinder Continues to Be Ranked No. 1 Trademark Registration Lawyer And Trademark Infringement Lawyer in California!

    June 23, 2020
  • When is an Alteration a “Material” Alteration

    When is an Alteration a “Material” Alteration

    April 24, 2020
  • Can you convert an ‘actual use’ trademark application to an ‘intent to use’ trademark application?

    Can you convert an ‘actual use’ trademark application to an ‘intent to use’ trademark application?

    January 2, 2020
  • Brian Kinder Ranked No. 1 Trademark Registration Lawyer And Trademark Infringement Lawyer in California!

    Brian Kinder Ranked No. 1 Trademark Registration Lawyer And Trademark Infringement Lawyer in California!

    May 5, 2014
  • The Kinder Law Group gets trademark infringement client $22k…..for being sued!

    The Kinder Law Group gets trademark infringement client $22k…..for being sued!

    March 4, 2014
view all

Related Post

See all blog posts

How Important Is Intellectual Property?

November 25, 2021 No Comments

The digital landscape has transformed the way we interact with other people’s intellectual property.

Read More

What Are The 6 Types Of Intellectual Property?

October 26, 2021 No Comments

Whether you are starting a business, developing a new product, creating art, or writing

Read More

Top 20% Of Most Active Trademark Litigation Firms in the United States!

January 22, 2021 No Comments

You are trying to find a law firm that handles trademark infringement and other

Read More

Q & A: Can a name and a logo be filed under one trademark application?

August 21, 2020 No Comments

No, separate applications are required. One application would be directed to the words and

Read More

We are ready to help. Call Now.

949.216.3070
CONTACT US
navigation
  • Home
  • About
  • Protection
  • Litigation
  • Flat Fee Filings
  • Attorney Referrals
  • Experience
  • Testimonials
  • Our Work
  • Our Cases
  • Careers
  • Contact
contact us
  • The Kinder Law Group
  • 19200 Von Karman, 4th Fl. Irvine, California 92612
  • Tel. : 949.216.3070
  • Fax : 949.216.3074
  • Email : firm@tklglaw.com

Privacy Policy | Disclaimer | Sitemap

Digital Marketing By:

© 2022 The Kinder Law Group. All Rights Reserved.