USPTO
3
allow researchers to determine a product
mark from a marketing mark. Following Hsu et al.
(2017), this research relies mainly upon two sources
of information to determine if a trademark is related
to specific products: drawing code and identification
character. In general, the trademark should have a
moderate amount of textual content and the text of the
mark should be relatively novel. (See Appendix 1 for
details of the classification scheme.)
I am also interested in trademark applications
because they express companies’ intentions to invest.
In general, there are two legal bases of applications:
“intent-to-use” and “in-use”
4
. “Intent-to-use”
applications can be filed when there is no product, but
applicants must file a declaration stating that they
have a bona fide intent to use the mark in commerce.
To file under the use basis, the owner must submit a
declaration stating that, as of the filing date, the mark
is used in commerce. The first option has only been
available since November 1989. An applicant filing
based on intended use cannot obtain registration until
(a) the mark is actually used in commerce, (b) a
verified statement or declaration to that effect is filed,
and (c) a specimen of use is submitted. By default,
there is a 6-month window for the applicant to file a
Statement of Use (SOU). The applicant may request
up to five six-month extensions for filing the SOU,
making the effective deadline for establishing use up
to 36 months. If the owner fails to establish use, the
application is treated as abandoned. Furthermore,
unlike patents, the review of trademark applications is
simple: (1) procedural matters such as proper
identification of the products and (2) the applicant’s
mark is not merely descriptive or likely to cause
confusion with a preexisting applied-for or registered
mark. With these said, for “intent-to-use” applicants,
they play an active role in the process-the decision to
apply and the decision to exit. Therefore, behaviors
engaged in trademark applications imply much about
a company’s expectations of future growth and how
they adjust to new information after the application.
2.1.1 Example: Apple Inc
One good case study about trademarks is Apple Inc.,
the world famous technology company that designs,
develops, and sells consumer electronics, computer
software, and online services. Its website
5
, has an non-
exhaustive list of 286 active and registered trademarks
owned by Apple Inc., and I matched about 80 % of
3
https://www.uspto.gov/learning-and-
resources/electronic-data-products/trademark-case-files-
dataset-0
4
See Graham et al. (2013) for more details.
them by name with the data set from USPTO
6
.
Additionally, using USPTO’s trademark data set, I
found 973 applications made by Apple Inc. since
1977. 66.5% are for new products, 59.5% are filed on
the basis of “intent-to-use,” and 18.8% are abandoned.
In the pool of applications made by Apple Inc.,
there are strong examples to show the difference
between: (1) a marketing trademarks and production
trademarks; (2) an “intent-to-use” and “In-Use”
application; and (3) registered applications and
abandoned applications. In Appendix 2, I have a list
of sample trademark applications made by Apple Inc.
Except for those well know logos and brands, for
example iPhone 6 and iPod, there are also many
attempts on products that are eventually abandoned,
for example the “Premium Reseller” and “X-Ray”.
The case of applying for a trademark for the first iPod
in 2001 is a good example of “intent-to-use”. Though
the iPod was released in 2001, its price and Mac-only
compatibility caused sales to be relatively slow until
2004. The final registration of the trademark was in
April of 2004. So what concerns the applicant of
trademarks is not only product development out of an
idea or technology, but also sales and profits.
Apple Inc.’s history of trademark applications
(Appendix) is typical for public firms. First, in the
early stage of the company, they devote more effort to
the research and development of new products, and in
later stages they focus on marketing and advertising to
shape their corporate image. Second, when firms have
developed, they become more aggressive/encouraged
to develop new products and apply for ”intent-to-use”
trademarks to seize the opportunity for any potentially
profitable projects.
3 RESULT
3.1 Summary Statistics
Since I will use the sample of intent-to-use
applications among public firms, I want to have an
overview of their patterns. I compare the time series
of public firms’ trademark applications growth rate of
intent-to-use (ITU) applications with a set of
aggregate level variables. I conduct pairwise
comparisons in Figure 1 and also show the correlation
matrix in Table 1. Grow rates or returns are
5
https://www.apple.com/legal/intellectual-
property/trademark/appletmlist.html
6
The unmatched can result from little difference in
names.