Trademark rights are not established simply by filing a trademark application with the US Trademark Office. Trademark rights can only be established by using your mark (words, design, or logo) in a consistent manner to identify goods or services in commerce. In fact, you cannot even file a federal trademark application unless you are already using your mark as a trademark in interstate commerce, or have a bona fide intent to use your mark as a trademark in interstate commerce (typically within about six (6) months of filing the trademark application).
So you can’t just file trademark applications to “reserve” a mark that you might want to start using sometime in the next five (5) years. You can, however, take the following approach:
1. Do a trademark availability search. A trademark availability search will give you some idea whether the mark you want to use is already being used by someone else for the same or similar goods or services. A good place to start is with the big Internet search engines (Google, Yahoo, Bing). And don’t forget to check the US Trademark Office databases. If you find others using your mark or similar marks for your product or service (or similar products and services), then you can pick another mark. At least you found out before you started your branding campaign and didn’t have to receive a cease and desist letter from the other trademark owner.
2. Discuss your proposed trademark with an attorney. If you think the mark you have chosen is available, consult a trademark attorney. A trademark attorney can tell you whether your mark is a strong mark or a weak mark. A trademark attorney can help you determine whether you might run into trouble when trying to register your trademark with the US Trademark Office. A trademark attorney can also tell you whether you run the risk of having another trademark owner stop you from using your mark because it is too similar to their own trademark.
3. File a trademark registration application with the US Trademark Office. Hopefully you haven’t started using your trademark yet. Once you know that you plan to use your mark as a trademark in interstate commerce within the next several months, you can file what is called an Intent-To-Use (ITU) trademark application with the US Trademark Office.
If you have already started using your mark as a trademark in interstate commerce, you can file an actual use trademark application with the US Trademark Office.
Here again, it is a good idea to speak with a trademark attorney and have the trademark attorney file your trademark registration application with the US Trademark Office so that you don’t make any mistakes that could come back to haunt you.
Only after taking these steps should you start your branding campaign . . . printing business cards, brochures, and other literature, buying advertising, labeling your product, and so forth. Otherwise, you may be forced to stop using your mark and start all over . . . which can be costly. Not to mention, you lose any goodwill that you may have already started to establish with your customers.
