On February 21, 2024, the legendary singer and entrepreneur Beyoncé debuted her hair care line Cécred. While washing my hair this morning, I listened to Crissle and Kid Fury (hosts of one of The Read – one of my favorite podcasts) speak about their great experience trying Cécred products and meeting Beyoncé and her mother, Tina Knowles. I had to find out more!
While examining the beautiful structure of the Cécred products, I could not escape the fact that I was a trademark lawyer. Beyoncé provided me with the perfect opportunity to discuss trademark’s intent-to-use basis.
What is an intent-to-use basis?
When one files a trademark application, the applicant must choose a basis for the goods/services identified in the application:
Use in commerce. Under this basis, the applicant asserts that they are actually using the mark in commerce in connection with the identified goods/services. In other words, at the time they submit their application, the applicant is currently selling/providing whatever good or service in association with the mark (ex. Apple in connection with cell phones).
Intent-to-use. Under this basis, the applicant asserts that in the near future, they intend to use the mark in commerce in connection with the identified good/services. They are not submitting the application, for example, to spite a competitor.
What does use in commerce mean?
It’s a principle based on the U.S. Constitution. If I was to break it down, a trademark has to be used in commerce with goods or services before the trademark can be registered.
For a trademark to be considered to be used in commerce in association with goods usually (1) the trademark has to be used in association with the sale of the goods and (2) the goods have to be sold (not just advertised).
For a trademark to be considered to be used in commerce in association with a service usually (1) the mark has should be featured prominently somewhere public (ex. a website) next to the description of services and (2) those services are actually provided (note that they don’t have to be sold) to third parties.
This is why people or companies can’t own a word. However, they can own a word if it used in association with the sale of goods or the provision of services.
Why would an applicant use the intent-to-use basis?
One major reason would be to protect business interests. Many celebrities do so prior to the launch of goods or services. Because celebrities are well known, if they were to actually use goods and services before filing a trademark application, others may try to submit a trademark application bearing the trademark.
Companies also file under this basis. For example, Facebook has filed many of its trademark applications under the intent-to-use basis. In essence, if an applicant has a good or service that they believe will become widely used, they should consider submitting a trademark application under the intent-to-use basis.
Another reason is cost. It’s best to find out whether you can use a trademark before investing time and money in research, development and manufacturing.
Can an applicant use the registered trademark symbol (®) if they file an application under the intent-to-use basis?
No. Only trademarks/service marks that have been officially registered by the United States Patent and Trademark Office (USPTO) can use that symbol.
Can I submit an application under the intent-to-use basis and reserve it forever?
No. From the time the USPTO issues a notice of allowance (in lieu of registration) for an application, an applicant has six months to submit something called a statement of use. In this statement, the applicant provides proof to the UPSTO that they using the trademark in commerce in association with all the goods or services they listed in their application. Use in commerce for goods usually means that goods containing the trademark prominently were sold to consumers.
If an applicant cannot file the statement within that six-month period because that haven’t starting using the trademark in commerce, they can file for a six-month extension to file the statement of use. They can extend up to five times (for up to three years of the date a notice of allowance is issued).
Thank you for the trademark lesson. But, what does all of this have to with Beyoncé’s Cécred?
My pleasure! As you can see in the picture above, none of the Cécred products contain the registered trademark symbol. That signaled to me that CÉCRED was not federally trademarked. This prompted me to research Cécred’s trademark history.
On June 16, 2022, Beyoncé’s company filed a trademark application under the intent-to-use basis for the mark CÉCRED in connection with 11 different classes of goods (including hair care preparations/products, candle, hairstyling tools, cosmetic bags, and clothes).
On April 5, 2023, with the approval of Beyoncé’s legal counsel, the USPTO made some changes to the application by (i) modifying the identifications in some classes and (ii) deleting one class related to accessories from the application.
On August 8, 2023, the application was granted a notice of allowance. Thus, Beyoncé would have had six months (or until February 8, 2024) to file a statement of use or extension request.
On February 1, 2024, Beyoncé filed a request for a six-month extension, which was approved. Thus, Beyoncé now has until August 8, 2024 to submit the statement of use for all the goods listed in the application.
Since Beyoncé started using the mark CÉCRED in connection with the sale of hair care products on February 21, 2024, she has several options.
Basically, although CÉCRED is not federally trademarked at this moment, it most likely will be in the near future.
Sounds like you know what you’re talking about! If I need help with filing a trademark, how do I contact you?
You’re too kind! We’d be happy to help you protect your brand. You can email us at info@jllaw.net or call us at 347-946-0597.
Image Credit: COURTESY OF CÉCRED
