The trademark registration process in the US has slowed considerably over the past few years. As of this writing, it is taking US Patent and Trademark Office (USPTO) Examiners roughly 8 months to complete their initial reviews of new trademark registration applications.
For intent-to-use trademark registration applications in particular, this draws out the process for approval or reject to a year or even more.
And this timeframe presumes that there are no substantive Office Action refusals or third party oppositions to deal with.
For you, then, the trademark registration applicant with perhaps less-than-infinite patience, what do you while waiting for your application to be approved?
Can you use your business name, product name, slogan, or logo in the meantime? Can you operate your business? Launch your product? What should and you shouldn’t do while twiddling your thumbs for a year after filing your trademark registration application?
Can you enforce your trademark prior to registration, furthermore?
This Article will address a few of these questions.
Running Your Business While Awaiting Trademark Registration
Trademark registration is not a license to conduct business. Rather, it is the Federal confirmation of your exclusive right to use a name or logo (or color or smell or sound, etc.) in relation to the marketing and sale of your particular goods or services in the United States.
Trademark registration confirms your right to police and enforce your registered brand through cease and desist letter service, USPTO trademark opposition and cancellation proceedings, through the enforcement of US Customs, and through Federal litigation as needed.
It is not a grant of right to start, name, or run a business.
Those powers lie with the Michigan or whatever other US state you are operating from or within.
A state-based business license, corporate formation, DBA, or other mechanism governs your ability to conduct business under a fictitious name generally.
Thus, you are able to launch or run your business, or launch your product, while awaiting your US trademark registration certificate.
Are there risks?
You run the risk that your trademark registration will not be approved by the USPTO, it’s true. If you launch your business or your product, over inventory, invest in costly marketing and advertising efforts, or take other actions presuming that your name or logo will be registered as a trademark and then it isn’t, you may incur a larger than might have been necessary re-branding cost.
If the reason that your trademark wasn’t registered is due a conflict or likelihood of confusion with a prior registered mark, you now further run the risk that that mark’s owner will serve you with a cease-and-desist letter or allege that you are infringing its registration if you proceed with the now-unregistered brand.
That is the risk.
However, on the other hand, you must be using the name or logo to have your trademark registration approved.
Trademark registration is, ultimately, only granted to applicants who are using the mark (name or logo or other) in commercial connection with their specific product or service.
Therefore, not running your business or launch your product is not the answer, either!
The answer is to ensure, from the start, that you have a strong trademark and to retain an experienced trademark registration attorney to run a professional clearance search of your proposed mark prior to filing your application.
Taking those steps prior to investing money in your business or product launch will maximize the odds that said money is not being wasted while you wait for your trademark registration.
Intent-to-Use Trademark Registration Applications: Get Your Ducks in a Row
If you filed an intent-to-use trademark registration application, in other words, you should, as quickly as possible, begin using your name or logo or slogan in commerce in connection with your product or service.
That means that, while you wait for your application to be examined by the USPTO, you should indeed launch your business or product. Or, at least, get your ducks in a row and begin preparing to launch as quickly as is possible.
When you file a trademark registration application, you have the option of filing an “in use” application or an “intent-to-use” application.
An in-use application is one filed for a trademark that you are already using in your marketing, advertising, and other commercial efforts as of the date that you file.
An intent-to-use application is one filed for registration of a trademark that you are not yet using as of the date that you file.
In order to obtain final approval of and registration of an intent-to-use trademark registration application, you must submit evidence that you are now using the mark in commerce. This can be filed at any time after the date of filing of the application, but it must be filed, at latest, within 6 months of the date at the end of the approval process on which your application is “approved for registration.”
This 6-month deadline can be extended 5 times—but, yes, the sooner you launch, the better, unless you are awaiting examination by the USPTO to determine whether there are any fatal issues first.
Using the Registered Trademark Symbol While Waiting for Registration
You cannot use the ® “registered trademark” symbol with your name or logo or slogan until your trademark registration application is fully approved. Doing so prior to registration is considered a form of fraud and can complicate your registration, at the very least.
While waiting for your trademark registration to be approved, you can use the “TM” symbol in superscript alongside your proposed mark. While “TM” does not have any real legal weight, it does tell the world that you are exerting at least a “common law” claim to the exclusive use of the mark.
Enforcing Your Trademark While Awaiting Registration
You must have a fully and completely registered trademark in order to truly enforce it. A certificate of registration issued by the USPTO is a prerequisite to filing suit for infringement in Federal Court, according to the US Supreme Court.
Can you do anything at all to enforce your brand while awaiting the issuance of that certificate?
You may have some limited right to enforce your brand against an infringer with a later-in-time first use date within Michigan, or whatever state you are operating in, depending upon the requirements of state law.
Otherwise, if you know infringement is underway, you can use the time spent waiting for the Federal trademark registration process to unfold to gather evidence, catalogue infringement websites and social media uses, and, again, get your ducks in the right row.
When your Federal registration is finalized, you will then be in a good position to take very quick action.
What to Do While Awaiting Trademark Registration: The Bottom Line
The bottom line is that, at the end of the day, there isn’t a whole lot to do while awaiting your trademark registration than to simply—wait.
Wait, that is, while launching and operating your business, ensuring proper use of your name or logo or slogan for final approval of an in-use trademark registration application, and keep an eye on the marketplace for any new or ongoing infringement.
Get those now very familiar ducks in the right rows—and practice the virtue of patience.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.