What’s in a Name? Why Federal Trademark Registration Matters by Jeromye V. Sartain

Every business has a brand.  And every brand implicates trademark law.  Being sure that your rights in your brand name are secured through trademark registration is vitally important to your business.

While federal registration technically does not give rise to trademark rights, it can definitely help in protecting and enforcing those rights, which are ultimately derived from “use in commerce.”  In the federal scheme, registration of your mark confers protection within the entire United States and serves to put others on notice that the mark is exclusively yours for use in connection with the goods and/or services identified in your registration.  A federally registered trademark also carries with it a presumption of validity.  And federal trademark law further provides that once you have used your mark continuously for five years after registration, it becomes incontestable and much more difficult to invalidate.

Because the registration of your mark puts others on notice, when it becomes necessary to enforce your trademark rights against someone using your mark or a confusingly similar mark without your permission, monetary and injunctive remedies and procedural advantages available only in federal court may all be realized.

Federal trademark registration and all state registrations are in the end based on actual use in commerce, but the federal trademark scheme in the U.S. includes one further registration option that provides trademark owners with a potentially tremendous advantage.  Under only the federal laws, even if your mark has not yet been used in interstate commerce, so long as you have a genuine intent to do so, you can file what is known as an Intent-to-Use (“ITU”) trademark application, with the filing date becoming the “constructive date of first use.”

The ITU application essentially allows you to protect or preserve your rights in a mark before you actually launch your product or service under the mark.  This will buy you valuable time to ramp up to your market introduction while minimizing the risk that someone else will commence use of and/or apply to register the same or similar mark in the intervening time so as to thwart your plans.  As such, the ITU process is essentially the only way to protect the brand name you have selected pre-market or pre-launch.

And if you have not yet used the mark in commerce within six months of allowance, extensions of time can even be requested for up to thirty additional months, or thirty-six months total.  Thus, it is possible that through a federal Intent-to-Use trademark application you can reserve rights in a mark not yet used in commerce for more than three years beyond the application filing date.

So, if you are interested in obtaining federal trademark protection of your brand, whether use of the mark has begun or is still in the works, or you simply would like more information, we invite you to call us at 615-807-1240 or email us at info@lodestonelegalgrouop.com to schedule a free initial consultation, during which we can explain your trademark options in more detail and answer any follow-up questions that you may have.

In the meantime, even absent a federal trademark registration, or while a federal trademark application is pending, you are entitled to use a superscript “TM” adjacent your trademark, which places the public on notice that you are asserting at least common law trademark rights in the mark.  You cannot use the “®” registered trademark symbol until the mark has completed registration – one more reason to get that done, and we can help!

Post Authored by Jeromye V. Sartain