In Part 1, we talked about the basics and potential pitfalls of trademarking your name for your product or service. One important point was that trademarks are for products or services currently being sold; otherwise referred to as “in commerce.” But what if you want to register a trademark for products you haven’t made yet but are planning to in the near future? That concept is known as “intent to use.” Let’s say you were planning on making t-shirts and other clothing products. Well, first, that is Class 25: Clothing and Apparel Products – Clothing, footwear, headgear. What we can do is submit an “intent to use” application for those products in Class 25. Think of it as holding a space in line.
Once you get the products made, you will need to convert your application to an “in use” application by paying the requisite fee. Even though your product isn’t made yet, nobody can trademark with your name for that class. If somebody makes products during that holding period, your trademark effective date will be the date that you submitted the “intent to use” application, not the day you convert the application to “in use” (which should be the day you sold the products in commerce). You cannot hold the space forever, though. You will have to pay a fee every few months just to continue the “intent to use” classification. After a couple of years or so, you may lose it. Certainly, if someone else wanted to register the Trademark, and could show you were not making any of those products for the last 2 or 3 years, they would likely be able to contest your “intent to use” classification.
If you don’t have a trademark, you are not without rights. Let’s touch briefly on the difference between ™, ℠ and ®. ® is for a trademark that has been registered and approved by the United States Patent and Trademark Office. (USPTO). The ® confers certain federal rights:
Registration gives a party the right to use the mark nationwide, subject to the limitations . . . . 15 U.S.C. � 1072. Registration constitutes nationwide constructive notice to others that the trademark is owned by the party. Registration enables a party to bring an infringement suit in federal court. 15 U.S.C. � 1121. Registration allows a party to potentially recover treble damages, attorneys fees, and other remedies. Finally, registered trademarks can, after five years, become “incontestable,” at which point the exclusive right to use the mark is conclusively established. 15 U.S.C. � 1065.(Harvard.edu)
This does not mean that you have no rights without a trademark. ™ and ℠, which stand for Trademark and Service Mark respectively, can be used attached to a name without registration with USPTO. The symbols are used to provide notice of a claim of “common law” rights in the name, which means regular everyday state laws. They inform potential infringers that a term, slogan, logo, or whatever name you are trying to protect is being claimed as a trademark. But, use of the symbol ™ or ℠ does not get you the federal protection. If you want to fight someone for using your name, then you have to go the standard lawsuit route, but the ™ and ℠ do give you a bit of extra protection over those that did not claim the symbol. That is a topic for another post but for now, if you do not have a trademark in your name or are in process, you can still use the ™ or ℠.
So, should you submit a trademark registration for your name?
In general, if you can show distinctiveness in the name, my feeling is that it is far cheaper to register a trademark now than try to fight someone over it later. Think of it as an insurance policy. You may not have needed it, but you are glad you have it when the accident happens. This is a big country, so someone may be out there right now using your name, making the same products without your knowledge. You don’t want them to become popular and apply for a trademark, knocking you out of the game. It is better that you are the one sending a cease and desist letter.
Finally, trademarks can be complicated. Don’t try to do Trademarks yourself if at all possible. Deciding on distinctiveness is only one of the many issues that a good Trademark attorney can help you determine. They know what to do, they can submit applications in a way in which they are more likely to be approved. Also, if the USPTO does have problems with the submission, they will issue “office actions” requiring responses. That is something you would be better served to have a trademark attorney deal with. The truth is that many trademark applications are denied, so working with an attorney enhances your chances of having your trademark approved. Applications submitted by attorneys have a far greater acceptance rate than those submitted by non-attorneys. Also, note that trademarks fall under federal law, so you don’t need to find a local attorney. You can use an attorney from anywhere in the country.
- 3 Steps to Establishing and Maintaining a Trademark (mediameansnothing.com)
- When to File A Trademark (hayeswinston01.wordpress.com)
- What is a Common Law Trademark? (sausserspurrlaw.wordpress.com)