Trademarks: In Commerce v. Intent to Use

Trademarks: In Commerce v. Intent to Use

One of the most common questions I get when discussing trademarks is when is an appropriate time to submit an application for a registration of a trademark. It is a good question that involves a number of factors. But the trademark office breaks things down into two different categories: “In Commerce” and “Intent to Use.”

In Commerce

Category 1A means that the trademark (name, logo, etc) is already being used in commerce. In commerce is the legal term that means you are already selling or actively advertising your goods in services using that trademark. One of the questions that the trademark office asks is when you started to use this particular trademark in commerce. This is important for establishing priority if there is ever a conflict between trademarks.

Intent to Use

Category 1B or Intent to Use means that the trademark is not being actively used right now to advertise products or services. However, there must be a bona fide intent to use the trademark in the foreseeable future. Thus, you cannot simply submit an application as a cybersquatting just to hold the trademark. You have to be developing the product or service in order for you to be able to file using the Intent to Use process.

So what does Intent to Use mean in terms of time? There should be a present intention (at the time you submit the application) to use the trademark at some point in the near future. Sometimes the near future, depending on product development cycles, might be in a couple of months. Or, it might even be a couple of years. If you go that long you’re going to have to explain to the trademark office why you are taking so long.

If it is in use it is quick and easy. If it is Intent to Use and you’re developing the product or service to have it to market reasonably within the next year to eighteen months, you’re probably going to be okay. The trademark Intent to Use process can give you up to three years to put the product or service into commerce. But you will have to justify to the USPTO why there is a delay.

When to Register

So when should you register the trademark? Well, when you have an idea of when you’re going to use it. Another thing to consider is registering a trademark is that brand identity has the tendency to shift over time. For example, take one of the most recognizable trademarks in the world: the Starbucks mermaid. That mermaid has gone through several modifications over time, and that is one of the largest companies in the world. You need to consider if you’re going to be going through a couple of iterations of your brand identity fairly early on because then it might be worth waiting to register a trademark until you’re more established.

Unfortunately there is no strict rule that guides when you should register your trademark, but if you are certain and you think you are going to be reasonably successful, then I suggest registering as soon as you come to the conclusion that you are in fact ready to go.

As always, if you have any doubts about the trademark process please give us a call and we’ll be happy to answer your questions.