Given that my practice is focused on patent and trademark law, many people often ask me if a business must be selling products in order to file for registration or protection of a trademark. The short answer to that question is NO! You do not have to be using a mark in commerce before filing an application to federally register a mark. A business owner only has to have a “bona fide intent to use” a mark before filing an application for registration. However, generally speaking, a business owner must eventually submit evidence that the mark is in “use in commerce” in order to obtain a registered trademark.
You may be asking yourself, why is this important to me? Many businesses spend thousands, if not hundreds of thousands of dollars in developing a brand. Given such a significant financial investment, savvy business owners need to ensure that his or her mark is protected before investing their resources into a brand. One of the first steps in protecting a brand for a product is registering the mark with the United States Trademark Office. A federally registered trademark may give a business owner exclusive rights to use a word, logo, or design in order to distinguish a product from the products of others. In other words, a trademark may provide a business with a significant competitive advantage.
Do it yourselfers must be very careful when filing applications by themselves. The Trademark Office does not verify all of an application’s content for accuracy. As a result, before filing an application it is extremely important to accurately determine whether a mark is in “use in commerce”. Failure to accurately state certain “use in commerce” dates may result in the cancellation of a trademark in litigation when the stakes are at their highest.
The attorneys at The Plus IP Firm have experience in preparing and filing hundreds of trademark applications on behalf of their clients. The attorneys at the The Plus IP Firm are available to assist you if you have not filed an application or have questions regarding an already filed application.