As mentioned in our Trademarks Part 2 blog, the US Patent and Trademark Office has two general types of domestic trademark applications. These are the 1(a) and 1(b) applications. A 1(b) trademark application is an Intent to Use (ITU) application. This means that you have not yet started using the proposed mark in commerce, but you have a bona fide intent to use it within the very near future. A 1(a) trademark application is used when the filing party has established use of the mark.
Intent to Use Application
So, why file under 1(b)? Well, things move very quickly in today’s electronically-focused business world, and new businesses pop up every day. Here is a great reason why you might consider filing a 1(b) trademark application:
You have a great idea and want to make sure you get there before someone else. You can protect your clever name for your business by being the first to file a 1(b) application, assuming that there is no other business out there that is already using that name or mark. 1(b) registrations revert back to the date of the original filing, so the faster you file your ITU, the further back in time your protections will relate.
You can never protect against someone who is already using the name for a legitimate business purposes. The first company to properly file a 1(b) will usually be granted the registration. When multiple 1(b) applications are filed for the same or substantially similar name, usually the later applications will be suspended until the first filed application is either granted registration, or abandoned. If abandoned, the next in line will be given the opportunity to register its mark.
One area where this consideration is very important today is mobile application development. A quick look at any of the mobile app stores on the web will tell you the story. There are many competitors, and many applications striving to provide the best experience or best service within their niche. And, within the same genre of applications, there are only so many names, and many of them already taken.
Likelihood of Confusion
Going back to our first blog, Trademarks – Part 1, you’ll remember that registration can be subject to the likelihood of confusion test. This is critical among the same class of goods or services. Likelihood of confusion is highest when there multiple applicants that all provide the same good or service.
In my example market, mobile app developers/owners need to be careful how they name and market their product. They don’t want to infringe another mark by picking a name similar to one that already exists. This will hinder their own registration.
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