If you are starting a business, or have already begun business operations, you are likely using some form of symbol or design to distinguish your goods or your services from similar products or service packages offered by your competitors. In some cases you may even be using a distinctive sound. Protecting the intellectual property (IP) rights to a trademark through registration with the United States Patent and Trademark Office (USPTO) can be crucial to a company’s success, but there can be a number of considerations involved in determining when to begin the USPTO trademark process. Consider discussing your situation and the factors that may apply to your business by scheduling a consultation with an experienced trademark attorney from Sullivan & Carter, LLP. Call (929) 724-7529 from anywhere in the United States to speak with a member of our Chicago team today.

What Is the Process of Getting a Trademark?

When business owners (or curious individuals) ask an IP attorney about the process of getting a trademark, often what they have in mind is the process of officially registering a trademark with the USPTO. In reality, however, as important as USPTO trademark registration is to securing a company’s intangible assets, that registration is only one step within a much more extensive process of trademark development and monitoring that in most cases begins long before a business even begins to assemble the documentation that will be needed to support its trademark application.

Stages in the Trademark Process - Development

As a trademark’s intellectual property status might suggest, the process of getting a trademark typically starts with an idea. Given the nature of trademark use, this idea is usually linked to some form of product or service the person (or business team) would like to sell.

Whether the idea emerges first as a realization that the business is going to need some means of identifying its goods or services in the marketplace, or in a burst of inspiration that links a sound or image to the company’s core ethos and flagship offerings, the steps that follow from the initial concept usually follow a progression similar to this one:

1. Development of good or service: If you do not have a product or service to sell, you might devise a mark, but it is not at that point a trademark. Trademarks identify the sources of the goods or services to which they are applied; their function is to signal to consumers the link between the item for sale and the business selling it. Without that linking function, the mark is merely an abstraction.
2. Branding development: A careful business owner with a valuable product or service to introduce into the marketplace will also put some thought and research into how the business behind that offering should be recognized. Planning carefully at this stage can not only smooth the way toward the success of a company’s eventual application to register its trademark with the USPTO, but may also lay the groundwork for a strong connection with consumers that helps to foster brand loyalty over time.
3. Checking for conflicts: This is another step that can save a business a great deal of difficulty later in the trademark management process, as well as helping to create the conditions for a clear, strong brand identity. In addition to making a careful survey of your competitors’ marks and branding elements, you may also want to go ahead and begin searching the USPTO database of registered and pending trademarks to ensure that the mark your team has in development is not closely similar to established marks from other businesses.
4. Market testing: This step is not strictly necessary, but can often be helpful. Some businesses choose to initiate market testing earlier in the overall process, during the branding development phase; this “overlap” method can allow a company to compare consumer responses to various trademark options under consideration and make informed decisions about which mark(s) to develop further as the entrepreneur or branding team makes further refinements.

Once the company’s teams for product development and branding strategy are on the same page (or, for a startup business, once the entrepreneur has reviewed options and refined the trademark), the business faces a choice: Launch the mark in conjunction with the product or service it is meant to link back to the brand and prepare to submit an application to register the mark with the USPTO under the “use in commerce” filing basis, or gather supporting materials and submit an early application for trademark registration under the USPTO’s “intent to use” filing basis.

Starting the Trademark Process - Considerations by Filing Basis

The United States Patent and Trademark Office provides two distinct filing bases for domestic trademark registration applicants (a third filing basis may apply to international applications). Sometimes the choice of filing basis is obvious because the circumstances limit a business to one or the other (for instance, if your business was already using the mark in trade before you decided to seek official registration, then only the “use in commerce” basis is appropriate). In many situations, however, the decision to file an application to register the trademark is planned well in advance, and there can be strategic considerations involved in deciding when in the business life cycle to start the trademark process for registration. An experienced intellectual property attorney from Sullivan & Carter, LLP may be able to help you weigh your options.

Use-in-Commerce Filing Basis

The “use in commerce” filing basis is in some respects the simplest of the two domestic filing basis options. This filing basis rests on essentially the same common law principle of rights-through-established use that also informs many aspects of United States trademark law. Under this model, the rights to exclusive use of a trademark belong to the party that devises the mark and begins using it as an identifier for their goods or services; due to some legal history in the United States, for the purposes of federal trademark registration the “commerce” has to be conducted across state lines (generally speaking, “commerce” that takes place within the physical territory of a single state falls under the jurisdiction of regulators in that state).

A business wishing to submit its application for trademark registration on the use in commerce filing basis will need to include with the application “specimens” showing how the trademark appears to (potential) consumers in the normal course of use (e.g., on a product or package actually offered for sale – the type of specimen needed differs somewhat between goods vs. services), so an application based on use in commerce can only be filed far enough along in the trademark process that the business has already developed a mark and put it into use as an identifier of goods or services.

Intent-To-Use Filing Basis

The necessity of including specimens showing how the mark appears to consumers in the course of its normal and habitual use means that a business cannot submit (or at any rate cannot expect to succeed with) an application for trademark registration on the use in commerce filing basis if the company is not yet actively using the mark. Businesses that have developed marks to use as identifiers in connection with their goods or services, but have not yet begun using these marks for their intended purpose in the everyday conduct of their commercial activities can choose to hold the USPTO application stage of the trademark process until they are ready to show use, or they may choose instead to pursue a type of conditional registration available under the USPTO’s intent to use filing basis.

The criteria used by the United States Patent and Trademark Office to determine whether the mark is sufficiently distinctive and to ensure that its use will not infringe on the existing intellectual property rights of other trademark owners by being overly similar to any mark(s) already in use, will be the same, regardless of filing basis. However, the supporting materials that must accompany the application to register a trademark will be slightly different for the intent to use vs. use in a commerce filing basis. An application to register a trademark under the intent to use filing basis will still need to supply representations of the trademark, but cannot include specimens of use in the strictest sense (since the mark is not actually being used at the time of submission). Instead, an application that is submitted under the intent to use filing basis, if granted a Notice of Allowance, will be subject to time-limited USPTO requirements for getting the trademark into use and updating the application file with a Statement of Use (accompanied by specimens).

Deciding When To Start the USPTO Trademark Process

The intent to use filing basis necessarily involves more post-submission steps than the use in commerce filing basis. If the business is for any reason unable to get the trademark into active use by the USPTO deadline for Statement of Use submission, then the business may find it necessary to file a request to extend the deadline, which will require paying additional fees. For these reasons, many entrepreneurs wait to begin the trademark process for federal registration until the business is active and the mark can be shown in use. However, there can be some drawbacks to this strategy.

Establishing and Protecting Intellectual Property Rights

One of the most important of these potential downsides is the extremely limited protection on intellectual property rights for a mark that has not been submitted for registration and has little to no history of documented use. In disputes over the rights to a trademark that has not been registered by its owner (or claimant), the primary means of proving trademark ownership in United States jurisprudence is typically to demonstrate “priority of use” – essentially, a version of “first come, first served” in which the party that can show earliest use of the mark is generally assumed to be its rightful owner. The viability of this argument drops dramatically when the use of the mark in question is planned, rather than practiced.

Documenting Priority of Use

One of the major advantages of the intent to use filing basis, despite the potential inconveniences this path through the trademark process entails, is that a trademark that has received a Notice of Allowance from the USPTO also gains the presumption of priority. This presumption can be challenged – and it is important to note that all applications for federal trademark registration are subject to a post-publication period during which parties who anticipate injury through the applicant’s use of the mark may file oppositions to the trademark’s registration – but the application process itself establishes a timeline that helps to “date” the applicant’s claim to priority of use, and also introduces the mark to the USPTO’s searchable database. The intent to use filing basis can thus be valuable to business owners and entrepreneurs in a variety of situations, but especially when there is reason to be concerned about trademark infringement or IP theft before the business would be ready to submit a USPTO application under the use in commerce filing basis.

Speak With a Trademark Lawyer To Protect Your Legal Rights

These are not the only considerations involved in the trademark process, and for maximum benefit that trademark process will need to continue long after the USPTO registration has been successfully achieved – not only with updated maintenance filings, but with aggressive trademark monitoring in the marketplace. Trademark monitoring is important not only for branding strategy reasons but sometimes for legal ones, as in the event of trademark litigation a company’s history of defending the exclusivity of its rights to a mark may become an important part of building a case. To learn more about the trademark process, or to seek assistance in weighing the factors involved in choosing a filing basis, reach out to an experienced intellectual property attorney with Sullivan & Carter, LLP. Our Chicago-based attorneys advise on trademark matters throughout the United States, so call (929) 724-7529 to speak with a member of our team today.