Intent-to-Use Filings · Office Actions · Post-Registration Maintenance · USPTO Audits · Fraud Risks
In Part I, we examined the risks that arise before and during filing: clearance search failures, ownership defects, improper use-based filings, and specimen mistakes. In this second part, we focus on what happens after the application is filed and why many trademarks are lost months or even years after an apparently “successful” registration.
Intent-to-Use Applications: A Useful Tool and a Common Trap
An Intent-to-Use (ITU) application allows an applicant to secure priority before actual sales begin. However, ITU filings require strict follow-up steps. Failure to complete them turns ITU into one of the most common causes of abandoned applications.
To mature into registration, an ITU application requires a timely Statement of Use with a compliant specimen under Section 1(b). Without this step, the application will be cancelled.
Key ITU Risks:
- missing deadlines for filing the Statement of Use leads to automatic abandonment;
- inability to convert an ITU application into use-based after certain refusals;
- improper or defective specimens trigger the same fatal consequences described in Part I;
- unexpected costs caused by extension fees and procedural bureaucracy.
How Legal Counsel Mitigates ITU Risks
A trademark attorney helps to:
- Select the correct filing basis aligned with the business launch strategy;
- Properly prepare and submit use evidence;
- Track ITU deadlines to preserve priority and avoid unnecessary expenses.
Case from Practice: Société des Produits Nestlé S.A. v. Candido Vinuales Taboada
Opposition No. 91232597 (TTAB, 2020)
The applicant filed an international application for the mark NESPORT in Classes 5, 30, and 32 under Section 66(a), asserting a bona fide intent to use the mark in U.S. commerce. However, the applicant provided no objective evidence of intent at the time of filing: no marketing materials, no sales plans, no supplier negotiations, and no trade show participation.
Nestlé opposed the application. The TTAB sustained the opposition, holding that the applicant failed to prove a bona fide intent to use the mark in U.S. commerce. Registration was refused.
Lesson: an asserted intent without contemporaneous, objective evidence is legally insufficient.
Office Actions: Not a Letter, More a Legal Challenge
Approximately three to four months after filing, applicants often receive an Office Action from the USPTO. The most common refusal under Section 2(d) is likelihood of confusion. The response deadline is six months. Missing it results in immediate abandonment.
Common Response Errors:
- missing the deadline under the assumption that it can be extended later;
- responding without a structured legal analysis under the DuPont factors;
- addressing only part of the examiner’s objections;
- substituting or altering specimens improperly;
- using contradictory or careless legal language.
The Lawyer’s Role in Office Action Strategy
An attorney must:
- analyze all relevant DuPont factors, including visual, phonetic, and conceptual similarity; relatedness of goods and services; channels of trade; target consumers; and strength of the cited mark;
- prepare a coherent, evidence-backed response using market research, screenshots, declarations, surveys, or real-world use data;
- negotiate and draft letters of consent from owners of cited marks when appropriate;
- escalate strategically, including TTAB appeals, requests for reconsideration, or procedural extensions.
Some Office Actions present an opportunity for correction. Others mark a legal point of no return. Experience determines the difference.
Procedural Reality
Under TBMP §1201.04 and the Trademark Manual of Examining Procedure (TMEP), if a response:
- fails to address all refusal grounds;
- lacks full legal analysis; or
- contains partial or inconsistent arguments,
then the refusal will be made final, even if an appeal is later filed. This is especially critical in Section 2(d) disputes, where even one unaddressed DuPont factor can defeat the application.
Post-Registration Maintenance: The Forgotten Risk
Registration is not the finish line.
To keep a trademark alive, the owner must:
- file a Section 8 Declaration of Use between the 5th and 6th year after registration;
- file Section 9 renewals every 10 years thereafter.
Missing these deadlines results in cancellation, even if the mark is actively used.
The Lawyer’s Role After Registration
Ongoing legal support includes:
- monitoring and filing maintenance documents on time;
- tracking potential infringements and conflicts;
- preparing cease-and-desist notices and enforcement strategies.
Many strong brands are lost not because of infringement, but because of missed paperwork.
Trademark Fraud and Loss of Control
Trademark records are public. Fraudsters actively exploit this.
Scammers send letters, emails, or phone calls impersonating the USPTO or IP firms, demanding payment for “mandatory” services. New applicants are frequent targets.
Common Scam Schemes:
- fake invoices for “monitoring” or “international registration” services;
- caller ID spoofing, i.e. calls from numbers resembling official agencies demanding urgent action;
- specimen factories, i.e. fake websites created to fabricate use evidence, exposing applicants to fraud findings.
Real Consequences:
- payment for worthless services;
- loss of control over application data (email, correspondence address);
- cancellation or hijacking of trademark ownership.
Anti-Fraud Role of Legal Counsel
A lawyer:
- explains which USPTO procedures are free;
- verifies all official correspondence through TSDR;
- reviews sender domains, content, and payment demands;
- protects against phishing, spoofing, and fabricated specimens;
- assists in filing complaints with the USPTO, FTC, or FCC.
Why Filing Without a Lawyer Is Risky and Often Expensive
Across the trademark lifecycle:
- superficial searches lead to refusals or rebrands costing $10,000+;
- incorrect classifications trigger Office Actions and delays;
- ownership mistakes destroy priority;
- missed Office Action deadlines cause automatic abandonment;
- ignoring post-registration duties leads to cancellation;
- fraud risks result in financial loss or loss of control.
What looks simple on the surface is, in reality, a continuous legal process filled with irreversible traps, deadlines, evidence requirements, enforcement risks, and fraud exposure confirmed by courts and USPTO practice.
Professional legal support is not a cost. It is how businesses protect priority, ownership, and long-term brand value. It is about risk management and the foundation of enforceable trademark protection.
If your brand matters, legal strategy matters.