by John Paul Dyro
In addition to applying to register a trademark that is already in use, trademark applicants may also file a U.S. trademark application in the U.S. Patent and Trademark Office (USPTO) based on a bona fide intent to use a mark in U.S. commerce. This option allows applicants to begin the registration process before the mark is actually used, helping secure priority while business plans are still developing.
To apply for a trademark on an intent to use (ITU) basis, the applicant must submit a verified statement confirming that, as of the application filing date, the applicant has a bona fide intention to use the mark in U.S. commerce on the goods and services specified in the application. This requirement is more than a formality; it reflects a genuine, good faith plan to use the mark in connection with goods and/or services.
A bona fide intent to use a mark is more than a subjective belief or hope that the mark will someday be used. Instead, it requires a firm, concrete intent to use the mark in commerce in connection with the listed goods and services, as opposed to merely reserving rights in the mark. If a bona fide intent is challenged, the applicant may be required to provide objective evidence, such as business plans, product development activities, marketing efforts, or licensing discussions, demonstrating that the intent to use the mark existed at the time the application was filed.
International applicants also should be aware that the bona fide intent requirement applies to applications filed under Section 44 (Paris Convention) and Section 66 (Madrid Protocol). While these provisions allow foreign trademark owners to seek registration in the United States based on international rights, they both require a declaration that the applicant has a bona fide intention to use the mark in U.S. commerce on the specific goods and services listed in the application.
The standard for bona fide intent for foreign applications is the same as for ITU applications that are initially filed with the USPTO. An intent to use the mark in the United States “at some point,” or an intent to reserve rights in the U.S. without a genuine plan to use the mark on the identified goods or services in U.S. commerce, is not sufficient to support a Section 44 or Section 66 application.
Understanding the intent to use requirement is important not only for obtaining registration, but also for maintaining a registration over time. Between the fifth and sixth years after registration of a U.S. trademark, every trademark owner must file an affidavit of continued use (Section 8 or Section 71) with the USPTO stating that the mark is in use in commerce on or in connection with the goods and services identified in the registration. Failure to timely file this affidavit results in cancellation of the registration. At the same time, many trademark owners also file a declaration of incontestability (Section 15), which asserts that the mark has been in continuous use in commerce for five years following registration and, if accepted, provides additional legal benefits.
Additionally, by the ten year anniversary of registration, and every ten years thereafter, the trademark owner must file a renewal application (Sections 8 and 9 or Section 71).
Section 8 and Section 71 filings required by the sixth and tenth anniversaries of registration both require the owner to specify the particular goods and services on which the mark remains in use. Any goods or services on which the mark is no longer used must be deleted from the registration at that time to avoid jeopardizing the validity of the registration.
Any time a Section 8 or Section 71 affidavit of continued use is filed, a trademark registration may be selected for audit by the USPTO as part of the USPTO’s post registration audit program implemented under the Trademark Modernization Act. If a registration is selected for audit, the USPTO will issue an Office Action identifying additional goods and/or services for which the trademark owner must submit acceptable proof of use. If the trademark owner cannot provide proof of use for any audited good or service, that good or service must be deleted from the registration, and additional USPTO fees will be required. Failure to timely respond to an audit Office Action or to properly pay required deletion fees can result in cancellation of the entire registration.
Importantly, the USPTO audit program applies to all trademark registrations, regardless of filing basis. However, applicants relying on Sections 44 or 66 should take particular care, as trademark filing practices outside the United States often differ from U.S. requirements.
The best way to avoid audit related complications and unnecessary fees is to limit U.S. trademark applications to only those goods and services for which there is a bona fide intent to use the mark in U.S. commerce. Careful consideration of goods and services at the application stage and/or when responding to pre-registration Office Actions from the USPTO can significantly reduce risks during post registration maintenance.
In particular, when responding to an Office Action from the USPTO, Section 44 and Section 66 applicants should not simply accept an examining attorney’s suggested amendments without critical evaluation or include broad “laundry lists” of goods and services within a class. Instead, applicants should list only those goods and services on which they genuinely intend to use the mark in U.S. commerce within the next five to six years. Doing so can help avoid the need to later delete goods or services during renewal, reducing both administrative burden and the risk of audit related complications.
Whether you are filing a US-originated ITU application or are seeking registration under Section 44 or 66, Andrus attorneys are able to help you navigate the complexities associated with the requirement that an applicant have a bona fide intention to use the mark in U.S. commerce.
Andrus Intellectual Property Law and attorneys Aaron Olejniczak, Ben Imhoff, Chris Liro, Joe Kuborn, and Peter Holsen were selected for inclusion in the 2026 edition of World Trademark Review’s WTR1000.
Andrus Intellectual Property Law attorney Ryann Beck was included in the 2025 Wisconsin Law Journal Powerlist for IP Attorneys.
Andrus Intellectual Property Law attorneys Ben Imhoff was selected to serve on the Trademark Office Practice Committee of the International Trademark Association (INTA) for a two-year term for 2026 and 2027.
790 N. Water Street, Suite 2200, Milwaukee, WI 53202, P (414) 271-7590, F (414) 271-5770
Copyright ©2026 Andrus Intellectual Property Law, LLP. All Rights Reserved. Site Map