So you’ve come up with the perfect name for your future goods or services. Now what?
You should first conduct a comprehensive trademark search to identify whether other uses of your mark exist. Some key entrepreneur friendly websites offer misguided advice: Entrepreneurship.com suggests that research is key, then states, “do a basic trademark search”. Forbes and SBA.gov offer the sound advice, “check for trademarks”, however, they both follow that with a link to the USPTO trademark search tool. The USPTO provides this search as a basic “knock out” tool. However, you should never base your decision to proceed with a name using this tool alone. For example, let’s say you decide to use the name NIE KEY for shoes. If you enter this in to the USPTO search bar you get zero results – “Yay!”. Again, it is a basic tool not a comprehensive search. The median price for trademark litigation in 2011 excluding damages was $384,000. A basic trademark search is treacherous waters, conduct the real thing if you truly intend to use the mark.
The two most common types of applications filed with the Trademark Office are based on Section 1(a)(actual use) or 1(b)(intent to use). If you have not used the name but plan on using the name in the future you should file an intent to use application. This application costs the same as an actual use application at the time of filing. However, it will cost you an additional $100 to file an Amendment to Allege Use or a Statement of Use once you begin using the name in association with your goods or services. In addition, you can file five six month extensions for $150 each after the Notice of Allowance issues. In other words, you can possibly reserve the name for three years after you receive a Notice of Allowance. You have to show “good cause” for extensions 2-5. For example, good cause would be building a plant for product manufacturing, working through research and development for a product, eccetera.
Reserving Your Trademark
No one calls it a trademark reservation, but that is exactly what you are doing. In order to rightfully file an intent to use application you have to have a “bona fide intention…to use” the mark in commerce. If you do not, your application is void ab initio (from the beginning). That means that you can’t think of some really cool name, file the trademark application, and sit on the name waiting for a potential buyer. This is why trademark trolls do not exist. After you have obtained registration you can claim the filing date as your date of first use even though you didn’t use the mark until after you filed. That’s the benefit of an intent to use application, you reserve the name. For example, let’s say you file an intent to use application January 1st and Company B files an actual use application January 2nd. We also have to assume here Company B’s date of first use is also January 2nd. You start using the trademark in July, file a statement of use, and successfully acquire a registered mark. Even though you started using the trademark in July, you have superior rights to Company B who started using the trademark in January. As a result Company B will be refused federal registration on a likelihood of confusion basis.
Filing an Amendment to Allege Use or a Statement of Use
An Amendment to Allege Use or a Statement of Use always accompanies an intent to use application. You file the Amendment to Allege Use before publication or you file the Statement of Use after Notice of Allowance. Do not file between these notices, because this is the “black out period“. The filing of either of the above will require a declaration (stating you’re using the mark) as well as a specimen (an image of your trademark in use in commerce). Once these are filed, and the application is approved, you are on your way to registration.
Our Plug: If you need trademark assistance you should seek trademark attorney help from OnlineTrademarkAttorneys.com. We offer a comprehensive trademark search for $299 and both a search and trademark registration for $475 plus government fee.
Published June 6, 2013 by Brent Sausser.