Know the Law: Getting Your Trademark Stake in the Ground

Catherine S. Yao
Associate, Corporate Department
Published: Union Leader
October 24, 2021
Image of Intellectual Property box

Q: I’m in the process of getting my new business off the ground. I have created a trademark that I plan to use with my products and want to ensure that nobody beats me to the punch while I prepare to launch. Do I have to wait until I have sales of product to file a trademark application?

A: Let’s assume that you have a distinctive or unique trademark that is not the same as or similar to a trademark being used by another entity for the same or overlapping goods (which may be clarified through a trademark clearance search). In that case, one of the quickest ways to get your “stake in the ground” in terms of trademark/brand protection, is to file an application for federal registration with the US Patent and Trademark Office (USPTO) on an intent-to-use (ITU) basis.

An application filed on an ITU basis allows you to obtain an earlier application filing date, as actual use is not required prior to filing and you do not need to submit any evidence of use at the time of filing. Ultimately, you will need to be making appropriate use of the trademark with the goods/services described in the application and file a Statement of Use before a registration may be granted.

As filing on an intent-to-use basis entails additional fees (i.e., in connection with any Extension Requests and/or the Statement of Use) that an application filed on a use-basis would avoid, you might wonder what practical benefit filing before you have use of the trademark really offers. The short answer is “priority,” and we’ll expand on that below.

In the United States, trademark rights typically go to the first entity that has actual use of a mark in commerce; however, the intent-to-use filing basis effectively creates an exception to this rule with the USPTO, allowing you to get your application in line for examination, as long as you have a good faith intention to use your mark in commerce.

When an application for registration of a trademark or service mark (interchangeably referred to as “marks”) is filed, it is examined against the USPTO’s database of registered and pending marks. The application filing date effectively limits the universe of potential marks on which an examiner may refuse registration to marks registered or pending prior to your application filing date. Therefore, waiting to file an application carries the risk that someone else may file an application for the same/similar mark for overlapping goods/services before you, putting them ahead in line for examination.

Ultimately, any number of factors may impact the decision as to timing to file an application and evaluating those factors and potential risks must be done on a case-by-case basis. It’s worth noting that the issue of priority is fact-specific and can be complex; simply having an earlier-filed application or even a granted registration does not guarantee that your mark is wholly risk-free. An experienced trademark attorney can help you navigate these questions and the application process.