For many trademark applicants, the question is simple: they file a 1a (“in use”) application if they have already started using their trademark in commerce or a 1b (“intent to use”) application if they have not yet started using the mark but have a bona fide intent to do so.
However, such a simple explanation glosses over a mountain of legal definition and complexity and grist for the legal mill worldwide.
An intent-to-use mark, once it has been published and drawn no objections, can be put on the shelf for up to three years as a sort of placeholder for the applicant’s full registration once the applicant puts the mark into use in connection with the goods and/or services contained in the application (as long as the applicant files the necessary extensions and pays the necessary fees every six months indicating that it still has the requisite intent to use the mark).
But what happens if you don’t want to reveal the mark with which you are hoping to brand your hot new ap? Or what if someone is already using that mark for a similar service, but you just have to have it? The answers may depend on how much money you are willing to spend.
Since reviewing the many thousands of daily 1b applications can provide a pretty good indication of products that certain companies are hoping to bring online (in some senses like studying provisional patents), companies concerned with secrecy may go to great lengths to game the system. According to the Russian newspaper Izvestia, Apple has just recently applied for two Russian trademarks for iWatch, one in International Class (IC) 9, which covers computer hardware and software, and one in IC 14, which includes watches… and many trademark lawyers iBalls are rolling again. Of course, this should not surprise us from a company that has previously registered trademark applications in Jamaica (iCloud), Australia (iPhone), and Canada (iAd), a strategy sometimes pursued by corporations seeking to use a foreign jurisdiction’s trademark laws to gain priority for US registrations while skirting the US publication requirements for intent-to use applications.
Another way to gain priority (i.e., to be able to claim that you were using a trademark earlier than your competitor who may have already registered the mark) is to purchase a valid (sometimes international) registration from another company. Apple, for instance, purchased the iCloud.com domain from the Swedish cloud services provider Xcerion (reportedly for $4.5 million) in 2011, at which time USPTO records show that the trademark for iCloud was also transferred from Xcerion to Apple. Such a purchase gives the buyer the right to claim priority back to the first use of the mark by the seller (in this case, 2007).
This did not stop Arizona VOIP provider iCloud Communications from suing Apple in 2011 (you can read the lawsuit here: http://www.scribd.com/doc/57544701/iCloud-Complaint), and trying to make a case that its telephone VOIP systems were likely to be confused with with Apple’s services. iCloud Communications claimed that it had spent tens of thousands of dollars each year on promoting its (common law) trademarks. Alas, glaringly absent from its complaint was any claim of federal registration. What really happened next is not clear, but, despite having claimed that “monetary relief alone is inadequate to fully address the irreparable injury that Apple’s illegal actions have caused and will continue to cause iCloud Communications,” iCloud, a few short months later, voluntarily dismissed the lawsuit with prejudice (meaning it can’t be filed again) and changed its name to Clear Digital Communications. Well, how about them apples?
For now, keep your iOut for the iWatch—it can’t be far away.