In the U.S., there are two common processes to federally registering a mark:
- Via the “Intent-To-Use” process, which involves:
- Determining the required filing information;
- Filing the application with the USPTO;
- Avoiding rejection by the USPTO’s Examining Attorney;
- Surviving the opposition phase;
- Receiving a notice of allowance;
- Providing satisfactory evidence of use; and
- Obtaining federal registration.
- Via the “Prior Use” process, which involves:
- Gathering satisfactory evidence of use;
- Determining the required filing information;
- Filing the application AND satisfactory evidence of use with the USPTO;
- Avoiding rejection by the USPTO’s examining attorney;
- Surviving the opposition phase; and
- Obtaining federal registration.
Of the two, the first method defers providing evidence that you’ve used the mark in interstate commerce in association with the goods/services identified in your application, and is therefore frequently preferred.
Here’s why:
Once its ITU application is allowed, your company has 6 months to complete the registration process by filing a Statement of Use, along with specimens (i.e., samples, typically photos or webpage screenshots) evidencing that use. Upon submission of a satisfactory reason for delay and payment of a USPTO fee, the deadline can be extended in 6 month intervals for a maximum of five times, up to a final deadline of 36 months from the date of your Notice of Allowance. In other words, you can file an application to register a mark, and defer actually using it for over 3 years! Using additional tactics, that deferral potentially can be extended to 5 years or more.
A request for an extension includes a sworn statement that your company still has a bona fide intention to use the mark in commerce but needs additional time to actually use the mark.
Also, ITU applications typically provide much more flexibility in providing proper evidence of use of the mark versus the Prior Use process which can easily result in abandonment of the application if the submitted evidence of use is refused as improper. This flexibility makes it easier to overcome mistakes in how the mark is used and/or in the specimens (evidence) of that use.