Securing Your Future Use of a Trademark

by Lisa Dunner on May 23, 2011

Can programming language names be trademarks?
Imagine that you come up with a great word, name, symbol, or some combination that you want to use as a trademark.

Did you know that as soon as you have a concrete idea as to what products or services you intend to sell using that trademark, you can stake a claim in it by filing an intent-to-use (“ITU”) trademark application with the U.S. Patent and Trademark Office?

There are benefits to taking advantage of the ITU filing system, especially if you are getting ready to launch a new product or service. Read below for a better understanding of this process.

The basics

Trademarks are used as source identifiers and represent the quality of the trademark owner’s goods or services as well as the goodwill of the owner’s business. U.S. trademark rights are typically use-based, meaning that products or services bearing a trademark must be sold before a trademark can be used to preclude others from using a similar name for similar products or services.

There is no legal requirement to register trademarks with the Trademark Office, but a trademark registration solidifies and strengthens trademark rights by giving the owner of a registration automatic nationwide rights, among other benefits.

When there is a dispute between owners of confusingly similar trademarks, the one with prior rights is the one legally entitled to use the trademark.

Bona Fide Intent is required

The beauty of an ITU trademark application is that you can protect your interest in a trademark before you commercialize its use. This way, you can lock in your rights in a particular trademark before a competitor does.

However, you must have a “bona fide intent” to use the trademark for the products and services identified in the application. Specifically, you must be contemplating using the trademark and, you must be taking active steps in preparation to use the trademark in commerce. Bona fide intent must exist at the time the application is filed and continue all the way up until actual use of the trademark.

The purpose of the bona fide intent requirement is to grant protection to only those applicants who can reasonably put the trademark to use in the marketplace, rather than to everyone who simply thinks of a cool name or logo.

The Trademark Office does not investigate bona fide intent, but your competitors might—and if another person or company thinks that your intent is questionable, then that person or company can challenge your ITU application.

Challenging another’s ITU application on the basis of a lack of bona fide intent has become an increasingly common occurrence. So, when filing an ITU application, the best way to protect yourself against such an allegation is to document your efforts to actually use the trademark in connection with the products or services you intend to offer.

This type of evidence may include a written business plan, internal correspondence regarding preparations for use in the marketplace, samples of proposed tags, labels, or artwork featuring the applied-for trademark, invoices or purchase orders from customers, and documentation relating to license negotiations. Importantly, this evidence should specifically display or refer to both the trademark and the intended products or services.

Rights kick in when trademark use is realized

While an ITU application reserves your rights in a trademark, those rights will not fully kick in until actual trademark use has begun and the ITU application registers. Once these events occur, you will enjoy trademark rights dating back to the date when you filed your application.

This is the biggest benefit of filing an ITU application, because it allows you to retroactively trump a competitor who may have started using a similar trademark before you, but after your filing date.

Given the powerful advantage that an ITU application can give your business, do not wait to file your trademark application. As soon as you can objectively document your intentions to put the trademark to use, get the registration process started with the Trademark Office in order to lock in your rights.

More from Lisa at Women Grow Business:

Image: opensourceway via Flickr, Creative Commons

Lisa Dunner is managing partner of Dunner Law PLLC in Washington, D.C. She has extensive experience in counseling, protection and enforcement of intellectual property and unfair competition rights. Lisa’s expertise includes, among other things, Internet-related issues, trademark and copyright infringement, source code, keyword ads, domain disputes, framing, linking and social media issues. She regularly conducts intellectual property audits for her clients; manages and enforces international trademark and copyright portfolios; and represents numerous clients in cases before the Trademark Trial and Appeal Board and in U.S. state and federal courts. Lisa also negotiates IP and technology-related agreements. You can find Dunner Law on Facebook or Twitter.

DISCLAIMER: The information posted in this blog is provided for informational purposes. Legal information is not the same as legal advice — the application of law to an individual’s specific circumstances. The information presented here is not to be construed as legal advice. Women Grow Business recommends that you consult an attorney if you want professional assurance that the information posted, and your interpretation of it, is appropriate to your particular business.


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