Do I have to file a trademark application to protect my trademark?
No. But if you can, it may be worth your while (check out Alex’s post on the Supplemental Register, which contains a brief discussion on the value of a federal trademark registration). Trademark rights can be established in the United States by commencing use of a trademark in commerce.
What does “use” mean?
For goods, use means the affixation of the mark on goods actually moving through commerce. A mark can be affixed in a number of ways, e.g. on product packaging, on an e-commerce webpage, or on a physical display associated with the goods.
Note that a sale of the goods isn’t necessarily required for “use” – what’s important is that the goods are moving through commerce. So, if you have a bunch of game players around the country beta testing your mobile game, that counts!
If a brand owner is providing services under a mark, “use” means the actual provision of those branded services (and not merely advertising them) in commerce.
Can I register my trademark with the United States Patent and Trademark Office?
Maybe. A brand owner who uses its trademark in more than one state (i.e. interstate commerce) may seek federal registration of its trademark. Federal registration confers many important benefits to the brand owner, including nationwide exclusive rights to the trademark.
A brand owner whose use of a trademark is limited to only one state cannot seek federal registration of a trademark. However, they can probably register the trademark with their home state’s Secretary of State office.
What if I really want to register my trademark with the USPTO, but don’t have interstate use yet?
Although you can’t register your trademark until it’s in use, you can still secure an early filing date with an “intent-to-use” application. The only requirement for filing an intent-to-use application is that you must have a good faith belief that you will use your trademark in interstate commerce in less than 3 years. The USPTO will examine your application, but won’t issue a registration until you can demonstrate use. It may cost more to do it this way, but you’ll hold your place in line (more on this in another post).
What if I have more questions?
Check out our other posts, or drop us a line!
By Ashley Long
PS: We’ll continue to update this list as we get more questions from rabid fans of the IP HOTBOX, which has been referred to as the “Game of Thrones of IP Law blogs.” Note: no one has actually said that.