In order to obtain a trademark registration in the United States, you must actually “use” your trademark in commerce. This requirement can cause a lot of confusion for individuals and businesses seeking the protection of a registered trademark.
When filing a trademark, the US Government asks the trademark applicant whether the trademark has been “used in commerce” or if the trademark applicant “intends to use” the trademark in commerce in the future. Many trademark applicants make the assumption that claiming use is “better” and therefore make up reasons they believe constitute “use.” This is extremely risky behavior. All trademark applicants should be aware that if the trademark application does not meet the statutory definition of trademark “use”, yet “use” of the trademark is claimed in the trademark application, then the trademark will be subject to cancellation at almost any time for the making of a fraudulent statement to the USPTO.
Because of the consequences associated with making an inaccurate statement in a trademark application, the question of what constitutes “use” of a trademark under federal law is one that frequently arises. One of the overriding guidelines for the use in commerce is that the trademark cannot be “used” just to obtain or reserve the trademark registration without intention of continued future use. This general rule exists primarily to prevent people from speculating about which trademark names could be desired in the future and registering them purely in the hopes of eventually selling them for profit.
The issue I run into all the times is that clients always want to believe they are “using” their trademarks. For example, many client claim that they are using their trademarks because they have shipments of product in from the manufacturer, they have intracompany use of the trademark, or they have sold a product or service to personal friends and relatives. These are all examples of unacceptable “uses in commerce.”
The good news is that applying for a trademark as “intent to use” is not necessarily a bad thing. Provided your trademark is strong enough, you can obtain priority on your trademark as of the date of your trademark filing. This is because the USPTO wants you to be protected while you are in the process of starting your business or bringing a new product or service to market. If you file as intent to use you have approximately one year from the date you file your application to prove to the USPTO.
The bottom line is that the issue of “use” in trademark law can be relatively difficult to navigate — and can have severe consequences if not handled properly. If you retain my firm to assist with your trademark registration, as your trademark attorney I will assist you with this any many of the other tricky issues associated with registering a trademark.
Tags: application for trademark, trademark registration, trademark registration process, us trademark registration