April 14, 2015
By: Francis J. Ciaramella, Esq.
One of the more common questions that we receive from our trademark clients is: when can I start using my trademark? Often, our clients wish to wait for a federal registration to issue before wanting to use their mark. In other words, they want a trademark registration before they start using it. This is backwards. Use in commerce almost always precedes a registration.
Except for trademark applications based on a foreign registration, all trademarks rights in the United States are based upon actual use in commerce before a federal registration is granted. The owner of a proposed trademark may request registration of its trademark on the principal register by making and drafting an application and verified statement, and by submitting such number of specimens or facsimiles of the mark as used as may be required by the Director. 15 USC §1051(a) (emphasis added).
Likewise, even if an application is based upon an intent to later use the mark in commerce, an applicant must still establish use before the registration is granted by later amending the application to conform with the requirements of §1051(a). 15 USC §1051(b).
When a client asks us whether they may start using their mark midway through the application process, the answer is almost always yes. If they are not using the mark, then their intent to use trademark application will not mature into a valid federal trademark registration. The client then asks: am I still protected though, even without the registration? The answer to this question is also yes, but not to the same extent. Without a registration, and during the application process, the client will still be able to enforce common law trademark rights.
This will generally lead to the client’s last question: why even have a federal registration for a trademark in the first place? “When a violation of any right of a mark registered in the Patent and Trademark Office…shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled to”:
- Any damages sustained by Plaintiff;
- Costs of the action; and/or
- Treble statutory damages for use of a counterfeit mark in the amount of not less than $1,000 or more than $200,000 per counterfeit mark. 15 USC §1117.
Do not wait to start using your trademark in commerce. As stated above, use in commerce is a ncessary prerequisite to having the trademark appluication eventually mature into a federally registered trademark. Without the registration, the aforementioned remedies are not available.
For additional information regarding trademarks, the filing of new trademark applications, demonstrating use of a trademark in commerce, or if you have any other intellectual property law questions or concerns, please feel free to contact our office at the telephone number above.