When we are preparing a federal trademark application, one of the most important things we need to know is whether you are – at the time of the application – actively using the trademark in the marketplace. If you are, we will file a use-based trademark application, also known as a section 1(a) application (corresponding to the section of the law that authorizes this type of application). But in many cases, an entrepreneur wishes to register a mark before he or she has introduced the product or service that the mark represents. As explained below, it is possible to apply to register a mark that is not yet being used. This type of application is known as an intent-to-use (“ITU”) application or a section 1(b) application.
Use-Based (Section 1(a))
We file a use-based application when you are already using the trademark “in commerce.” Using a mark “in commerce” means a bona fide use of the mark in the ordinary course of trade. If the mark is used with goods, it will be deemed to be used in commerce when, for example, it is placed on the goods, on the containers of the goods, displays associated with the goods, or on the tags or labels. Use in commerce also requires that the goods be sold or transported in commerce of a type that can be regulated by Congress, which generally means in interstate commerce or affecting interstate commerce. (Strictly intrastate commerce will not provide a basis for federal registration.) For a mark associated with services, rather than goods, the mark must be used in connection with the sale or advertising of the services and the services must be rendered in commerce. Determining whether a mark has been used in commerce can sometimes be a complicated analysis, we can help you sort it out.
Intent-to-Use-Based (Section 1(b))
If, on the other hand, you have sincere plans to use the mark in commerce but are not yet doing so, an ITU application essentially permits you to reserve the trademark for your exclusive use in your field. You must actually use the mark in commerce, however, before a registration ultimately will be issued. Reserving a mark with an ITU application can be a good option since developing an brand can take time. If you are creating a brand from scratch, you may need time to design logos and packaging, order raw goods and supplies, produce the product to be sold, create a website and the like. An ITU application provides the comfort that some other party will not be granted the rights to your mark while you are hard at work launching your business.
With an ITU application, once the trademark office “allows” your mark, we will have six months to file a Statement of Use, which is a declaration by a trademark applicant that the mark is currently being used in commerce. A governmental filing fee will also be required. Should your mark not be used in commerce by the due date to file a Statement of Use, we can file various requests for six-month extensions of time to file the Statement of Use; a request for a six-month extension can be filed every six months, for up to three years.
Whether you have a new or established business, trademarks can be an essential part of protecting what often becomes a company’s most important asset: Its brand and goodwill. At the startup stage, entrepreneurs often are looking for guidance on how to get the most protection without having to file multiple trademark registration applications with the U.S. Patent and Trademark Office. So, we are often asked whether a business should register its name, logo, or both.
As a preliminary matter, it’s important to note that it’s not necessarily your company name that you are registering for trademark protection. Rather, it’s the name used to identify you as the source of goods or services in the marketplace. Simply using a business name that identifies a corporate entity, but that doesn’t indicate the source of goods or services to a consumer, won’t cut it.
Faced with the question of whether you should register simply the word(s) associated with your goods or services (a word mark) or a logo associated with your goods or services (a design mark), the answer will almost always be a word mark, for a number of reasons.
When you register just your name, it’s considered a “standard character mark” and you’re protecting the name itself, apart from any coloring, font, or other styling of the word(s). From a legal standpoint, registering a word mark tends to offer the broadest protection, since it prevents others from using your name, in any format or way. So, for example, a competitor can’t use your name, but in a different style than how you use it. It’s the words themselves that are protected. You have the exclusive right to that name in your commercial space, and you can prevent others from using the name in any manner – or anything confusingly similar to it.
On the other hand, when you register your logo, your protection is more limited, since it covers the exact shape, stylization, orientation, and sometimes colors in that logo. Your logo may or may not include your name, but ultimately what you’re preventing others from using is your logo, or something that looks confusingly similar, not your name.
So, while generally speaking, a word mark offers more protection than a design mark, there are circumstances where it will make more sense to register a design mark than word mark. Most commonly, you may be unable to obtain a word mark for a number of reasons, including:
When one or more of these factors are present, posing a challenge to registering a word mark, a design mark can be a good fallback option to at least protect the logo or other important aspects of the mark.
If your budget allows it, the best strategy usually is to register both your name and logo. Every situation is unique, however. If you have more questions about this topic, we’d love to hear from you. You can contact us here or tell us more about your mark.
Starting a new business can seem like an overwhelming and never-ending series of decisions and expenditures. So any savvy business owner will, of course, look to prioritize the “needs” from the “wants.” One of the most common questions we hear from clients – especially those at the start-up stage – is whether federal trademark registration is worth pursuing.New business owners often spend a great deal of time finding the perfect name for their business, not to mention making a monetary investment in a good design for their brand. Entrepreneurs often have a vague sense that a registered trademark can be important, but are not always familiar with the underlying reasons.
It is worth noting that certain trademark rights arise just from using a trademark “in commerce” – which essentially means you are legitimately doing business under your name and logo. These automatic rights are known as common law trademark rights, and they result from your use of a name and not from any statute, rule, or registration. Common law trademark rights have been developed under the judicial system (rather than by a legislative body) and are governed by state law. The great thing about common law rights is that they are automatic and you gain them simply from using your mark in commerce. The drawback is that common law rights are limited to the market where you actually do business. So, someone in another state could use your business name and you may have no recourse. This can get to be sticky when you are marketing your goods or services through the Internet. To claim rights in a certain location, you may need to prove actual ongoing sales to customers in that area or otherwise show penetration of that market.
Because of this limitation of common law trademark rights, we often recommend that our clients federally register their trademarks. One of the most important advantages to a federally registered mark is that it gives the owner an exclusive nationwide right to use that mark. Other advantages of owning a federal trademark registration are:
The bottom line is that trademark registration is an investment. The initial cost (and hassle) is relatively minor, but the protections that come with registration can be invaluable down the road as your brand accumulates goodwill. If you are an entrepreneur considering registering a trademark and you have questions or want further information, we’d love to hear from you. You can contact us here or tell us more about your mark at our Get Started page.