The New England Patriots football organization is a model of success and efficiency in pro football, winning five Super Bowls and appearing in two others in the past sixteen years. The team’s rosters are frequently composed of no-name role players and former stars willing to accept less salary for a chance to play for a championship. They draft smartly, don’t overpay players and have managed to hold onto star quarterback Tom Brady. In short, they demonstrate vision and planning to ensure success.
These traits apply to the team’s approach toward trademark protection as well. Two days after winning this year’s Super Bowl, the Patriots filed intent-to-use (“ITU”) trademark applications to register BLITZ FOR SIX and NO DAYS OFF for, among other things, clothing and entertainment services. The Patriots had not used the marks before; these are marks that the team intends to use in its quest for a sixth Super Bowl championship.
Taking advantage of the ITU filing process at the U.S. Patent & Trademark Office (“PTO”) is a smart move for businesses like the Patriots that want to put others on notice of their plan to use trademarks in the future, while preserving their right of priority until that actual use occurs. The process provides lots of advantages. If the PTO refuses the application, this gives the applicant time to apply for a different mark typically before he actually uses it. If the PTO issues a Notice of Allowance, the applicant then has six months – and potentially up to three years if it pays for extensions – from the date of the notice to submit proof of use of the mark and register the mark. This is precious time for business owners to come up with a marketing campaign and for start-up companies to finish developing the product to which the mark pertains. Failure to timely submit proof of use of the mark or properly acquire extensions will result in the PTO dismissing or abandoning the ITU application. The pending application also suspends the progress of subsequently-filed ITU applications for similar marks and goods/services.
Once registered, the ITU application’s original filing date serves as the registrant’s “constructive use” date for purposes of determining priority in the mark. This priority grants the registrant superior rights in the mark over users of conflicting marks who commenced use after the application was filed. For example, if someone starts using BLITZ FOR SIX to sell clothing this summer, the Patriots can alert them of its ITU application and that the team will enforce its rights once the mark is registered. So even prior to registration the ITU application serves as a useful deterrent.
There are special rules pertaining to ITU applications, such as meeting the “bona fide” intent requirement, applying for extensions of time to file a statement of use, and the transfer of rights in an application. Husch Blackwell trademark attorneys can help you navigate these rules so that you, like the Patriots, can plan ahead to preserve your trademark rights.