The Trademark Application
If a trademark search discloses that a mark is available and is eligible for federal registration, an application should be filed promptly with the U.S. Patent and Trademark Office (PTO). Delay may allow another to select the mark, and search results can quickly become stale. After examining the application, the PTO issues a registration for the mark. The process generally takes about twelve to eighteen months.
Two types of applications may be filed with the PTO by a U.S. applicant: an application based on actual use of the mark in interstate commerce and an application based on the applicant's bona fide intent to use the mark in interstate commerce. The intent-to-use application process affords companies significant advantages. Until the late 1980s, companies were required to use a mark before applying for its registration with the PTO. If the PTO determined that the mark was merely descriptive or was confusingly similar to that of another, the application was rejected and the company was forced to select another mark, spend money advertising and using it, and then take another gamble that the PTO would approve the mark for registration. The intent-to-use application solves this problem by allowing