The mark has been chosen, the trademark search was clear, and it has been decided that the mark should be registered. The next step in the process is straightforward – file an intent to use (ITU) trademark application.

It is not necessary or recommended to wait until the mark has been used to file the application.    An application can be filed based on your bone fide intent to use the mark in the future.  The application will not register until after use begins. Once use begins, a separate statement is filed claiming this use. After the application is approved by the Examiner and has been published for opposition, a Notice of Allowance will issue.  The applicant then has 6 months to file either a statement of use, or to request a 6-month extension of time.  A total of 5 extensions of time can be requested – up to a total of 3 years after the date the Notice of Allowance issues. If use has not begun after the expiration of the 5th extension of time, the application will abandon as a matter of law.

The benefit of filing an ITU application is that once use begins and the application is registered the owner can claim a constructive date of first use as of the filing date of the application.  This could add months or years to the start date of your rights. There are some additional costs and filing fees associated with the filing of the use statement and/or extensions of time to file the use statement; however these are offset by the right to claim an earlier starting point for your rights.

After choosing the mark itself, an important part of the registration process is crafting the identification of goods or services.  You want the identification to be both broad and specific.  If the mark will be used as an overall mark for your entire organization, the identification may be straightforward “hospitals and medical services.” If the mark will be used for a specialized service offering, it may be necessary to develop a more specific identification.

If the identification is too broad, the Trademark Examiner may issue an Office Action requesting clarification.  It is possible to amend the identification as long as the amendment does not add any goods or services not covered by the initial identification.  Thus, it is possible to amend “hospitals and medical services” to “hospitals and medical services in the field of geriatric care;” however, the opposite amendment would not be allowed as it would broaden the scope of the services covered.

If you are not sure of the exact services for which you will use the mark, it is acceptable to include multiple services in the identification (healthcare services in the fields of geriatrics; home health services in the field of geriatrics).  However, when the statement of use is filed, it is necessary to delete any services that you are not offering under that mark.  So, if you are not using the mark for home health services, they should be deleted from the application when the statement of use is filed.  If the statement of use includes goods or services not in use, it can be considered to be a fraud on the Trademark Office and endangers the validity of the entire registration.

If the mark you wish to register is already in use, then the application should claim this use when it is filed.  In this instance, the identification of goods or services should only include goods or services that are actually being offered using the mark.  In the case of a use application, the Applicant’s rights already exist, as of the date of first use, in the geographic areas where use has occurred.  Upon registration, those rights will be expanded to include the entire United States as explained in last week’s post.

In addition to crafting an accurate identification of services, it is also important to file the application in the name of the proper entity.  There are also legal restrictions on the ability to transfer an ITU application.  An ITU application can only be transferred if there is also a transfer of the assets of the company associated with the business.  If your organization has related companies and subsidiaries, there are a number of considerations involved in deciding which company should own the marks. These issues should be discussed with your trademark counsel.

Our Insight. Your Advantage.  The registration process is an important step in protecting your trademark.  By filing an ITU application, you can add months or years to the start date of your rights.  Additionally, you should craft your description of goods and services carefully to ensure that you are gaining as much protection as possible without risking the validity of your registration.

Here are the other installments in this series: