In part three of Trademark Basics we explore “intent to use” trademark applications, interstate commerce, and common law rights in trademarks. You may be interested in Part 1 on “Selecting A Trademark,” Part 2 “From Selection to Application,” and Part 4 “Post Registration.”
Q: What is “intent to use”?
A: If you have not yet used the trademark, but plan to do so in the future, you may file an application with the United States Patent and Trademark Office (USPTO) based on a good faith or bona fide intention to use the trademark in interstate commerce. You do not have to use the trademark before you file your federal trademark application. Later on in the application process, you will need to file proof of using your trademark in interstate commerce. A total of five extensions, each lasting six months in duration, may be granted by the USPTO before proof of use in interstate commerce is required. Each extension incurs additional filing fees.
Q: What is “use in interstate commerce” for services?
A: In general, the trademark must be used or displayed in the sale or advertising of the services and the services must be rendered in interstate commerce.
Q: What is “use in interstate commerce” for goods?
A: In general, the trademark 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 interstate commerce.
Q: I understand there are five possible extensions, each lasting six months, before I must submit a Statement of Use to the USPTO, demonstrating use of my trademark in interstate commerce. I have used all five extensions, and my business will not be open before the final extension expires. What can I do?
A: You may wish to consider filing a new trademark application as soon as your last extension expires. This starts the process over, including a new filing fee to the USPTO. We encourage clients to think over their business plan carefully before filing a trademark application.
Q: Does filing a federal or state application guarantee a registration?
A: No. Filing a trademark application does not guarantee that either the USPTO or the applicable state will grant you a registration.
Q: Do I have to secure a state or federal trademark registration to own a trademark?
A: No. A person/entity acquires rights in a trademark by being the first to use the trademark in the marketplace for specific goods or services. Rights in a trademark are obtained only through commercial use of the trademark. Coining a phrase or designing a logo is not enough to secure trademark rights. You must use the phrase or logo on or in connection with your product or service.
If you are ready to learn more about trademark attorney Tamera Bennett’s 5 Steps to Filing a Trademark Application, click here.