The timeline of the application process may vary depending on whether § 1(a), use in commerce, or § 1(b), intent to use in commerce, filing basis is selected. This is because additional time is granted to § 1(b) applicants for submitting proof of use of their marks in commerce.
Applications based on § 44(e), foreign registration, and § 66(a), request for extension of protection to the U.S. under the Madrid Protocol, usually mature into registrations within the same time frame as that of § 1(a) because the use of these types of marks in commerce is not subject to examination.
Applications based on § 44(d), earlier-filed foreign application for the same trademark used on the same goods or in connection with the same services, can be processed within a year or longer depending on the length of time it takes applicants to submit foreign registration certificates or to overcome possible challenges to registration.
Applications based on §1(a), use in commerce, can mature into registrations within nine to 24 months after being filed, provided that applicants successfully respond to all Office actions issued by the USPTO and no other third-party challenges prevent the registration of those marks.
Section 1(b) filing basis, intent-to-use a mark in commerce, provides an opportunity to entities that have not yet begun to use their mark in commerce to establish nationwide priority based on the filing date of their application.
Listing of the Goods and Services
Some important issues to consider when listing your goods and services in the application …
First – The number of classes into which your goods and services fit determine the cost of the application because government fees are calculated per class.
Second – Applications containing multiple classes of goods and services are often more difficult to prosecute and maintain as they mature into registrations than single class applications.
Third – It is possible to apply for additional classes of goods and services on which the mark is attached or with which it is associated at a later date provided that all relevant legal technicalities are skillfully dealt with.
Fourth – The language used to describe the goods and services in the application dictates the type of application that must be selected.
Fifth – Proper identification of the goods and services listed in the application is essential for future likelihood of confusion analysis and enforcement actions because the identification cannot be clarified later.
Sixth – The identification of the goods and services specified in the application, in addition to the number of classes into which they are distributed, affect the scope of any future international application that may be filed based on the home application.