Last updated on July 17th, 2018
You’ve probably heard that it’s a good idea to register your trademark with the USPTO. Before you do, you need to make sure that you’ve passed a few important milestones with your mark.
For the purposes of this article, I’m assuming that you’ve already chosen a legally strong name for your business or product name, and that you’ve already performed a comprehensive trademark search. This means that your name isn’t generic or too descriptive, and that no other business is already using your mark.
Before you can register your mark federally, you’ll need to prove that you’ve actually used your mark in interstate commerce, or that you intend to do so soon. You’ll also need to document its use in commerce and give that evidence to the USPTO
Actual Use: Commerce Across State Lines
Many of my clients have been using their trademark or business name for a long time before they consider registering their trademark with the USPTO. Many already operate successful businesses. Some are small but successful operations that have grown over time while others started out with grand ambitions and then find themselves fulfilling their dreams.
No matter where these clients come from, they realize that formalizing all aspects of their business leads to greater business security and a higher company value. Officially registering the brand as a federal trademark is part of a very natural process for these entrepreneurs.
If you’re a small business—take a restaurant for example—who has only made sales in a small geographic region within your home state, you won’t be able to register your trademark with the USPTO. Commercial activity alone isn’t enough—it has to be interstate commerce.
Even though you can’t register your trademark federally, keep in mind that this won’t prevent you from seeking trademark rights through whatever state processes may exist.
On the other hand, obtaining federal trademark registration will be likely for businesses that regularly conduct business across state lines. They might do this through a strong online presence via a company website, or perhaps they simply have a business presence near the border of two states.
All it takes is one transaction across state lines to satisfy your mark’s eligibility to register with the USPTO. Clearly, the basis for your registration and your trademark rights in general will be stronger if you can show a pattern of interstate commercial activity. Once you’ve made that interstate sale though, you qualify to register your mark with the USPTO.
Real Intent to Use
What if you haven’t engaged in interstate commerce yet, but you know that it’s coming?
Well, it’s also common for new and growing businesses to file what’s known as an intent-to-use trademark application. This allows you to file an application with the USPTO and go through the publication and approval process before you begin to use the mark in interstate commerce. What this does is save the priority date, which can be important in the event of a trademark dispute related to priority.
(Priority is a trademark term that just means “Who used the trademark first?”)
The intent-to-use application process allows you to lay claim to a trademark in case you believe a competitor business might also seek registration for the same name. However, you can’t use the intent-to-use process to try to tie down a name and prevent others from using it. You must have a bona fide intention of using the trademark when you seek registration.
After approval of an intent-to-use mark, you’ll need to file a statement of your actual use within six months, or renew. You can only extend your intent-to-use application for a period of three years.
Specimens of Use
Regardless of the basis you use to register (actual or intent-to-use), you’ll have to upload a specimen of that use to the USPTO. When we talk about specimens of use, we aren’t talking about the image files of your logo.
Instead, a specimen of use should show how you use your trademark to brand your products or business. Good specimens could be anything from a screenshot of your logo on the order form page of your website, or a picture of your trademark on packaging material.
On a related note, hold on to evidence of interstate sales (receipts, invoices, etc.) to establish the date you first used the product in interstate commerce
Once you’ve used your uniquely distinctive mark in interstate commerce and showed that evidence to the USPTO, you shouldn’t have any trouble registering your trademark at the federal level.