If you’ve just named a business or a new product, should you file for federal trademark protection?
Just as anyone can file a lawsuit, no matter how frivolous, there is nothing to prevent you from filing for a trademark. However, the United States government requires you to declare your basis for filing and provides clear guidelines for what constitutes an acceptable basis.
While certain international agreements provide a recognized basis for filing a trademark, most U. S. applicants base their application on their current use of the mark in commerce or their intent to use their mark in commerce in the future. In other words, you need to show that you are serious about acquiring the mark for actual use in business or are already using the mark as part of your business.
The federal government defines commerce as “all commerce that the U. S. Congress may lawfully regulate. ” This includes interstate commerce or commerce between the U. S. and another country.
To prove you must show use of the mark in the ordinary course of trade. In other words, you cannot apply for trademark registration simply to reserve or put a “hold” on the mark.
Generally, acceptable use is as follows:
For goods: The mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.
For services: The mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.
If you have already started using the mark in commerce, you may file based on that use.
A use-based application must include a sworn statement that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce.
A properly worded declaration is included in the United States Patent and Trademark Office’s (USPTO) standard application form. The applicant, or a person authorized to sign on behalf of the applicant, must sign the statement. The application should include a specimen showing use of the mark in commerce. If you have not yet used the mark - but plan to do so in the future - you may file based on a good faith or genuine intention to use the mark in commerce. You do not have to use the mark before you file your application.
An “intent to use" application must include a sworn statement that you have a genuine intention to use the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant, or a person authorized to sign on behalf of the applicant, must sign the statement.
NOTE: If you file based on intent to use, you must begin actual use of the mark in commerce before the USPTO will register the mark; that is, after filing an application based on “intent to use, " you must later file another form ("Allegation of Use") to establish that use has begun.
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Rosemary Hauschild is an innovation and creativity business coach serving individuals developing intellectual property. Impact Coaching International™ offers a year-long program showing creative individuals how to protect, promote and profit from their innovative ideas in less time and with more profits. Individual coaching services are also available. To learn more about how to protect and promote your intellectual property, you are invited to subscribe to the free e-zine, Creations Of The Mind™, by sending an email to firstname.lastname@example.org with the following phrase in the subject line of your e-mail: subscribe creations list. To contact Rosemary directly, please email email@example.com.