Intent to use trademark registration with USPTO in the US. Individual legal entity type.

An intent to use trademark registration does not show evidence of a mark being used in commerce. An ITU registration and potential extensions of time require evidence that a good/service is on its way to market but such R&D does not necessarily constitute business activity.

Do you agree with this statement? Could a person that is temporarily but contractually and exclusively tied to an employer (a foreigner through a work visa for example) file for their own ITU registration for the future, as an individual?

What risks might they be exposed to?

1 Answer 1


The employee owes a duty of loyalty to the employer not to appropriate business opportunities from it while employed, and may have a more express contractual assignment of intellectual property rights to the company.

If the trademark relates to the employer's line of business in some way, the employee could be sued for breaching the duty of loyalty and/or employment agreement if it has a relevant provision.

The relief requested could include holding the trademark as a trustee for the benefit of the company (a constructive trust), any liquidated damages provisions in the contract, and forfeiture of salary starting from the period when the disloyal conduct began (i.e. the date of the application or perhaps the preparation of the application a few days earlier).

On the other hand, barring an express employment contract term to the contrary, and if the trademark did not involve the employer's line of business, there would be no consequences at all.

  • Intent to use a trademark is not, per se, engaging in a competing business. Dec 26, 2019 at 2:04
  • 1
    @GeorgeWhite Filing an ITU application is concrete activity involved in launching a business and would probably constitute a duty of loyalty violation. For duty of loyalty, the issue is whether you are working on another business that will ultimately compete and not necessarily whether the competitor already had products on the shelves competing at that moment.
    – ohwilleke
    Dec 26, 2019 at 19:03
  • Isn't there a wide gap between panning a competing business and "appropriate business opportunities"? Dec 26, 2019 at 21:28

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