Intellectual property rights are rights in creative works. They protect the value of unique ideas and designs that people first create. A trademark is a type of intellectual property identifying a particular business’s product or service, or individual’s intellectual property. No legal action is required to begin using a particular trademark, however someone who is already using a similar mark may object. There is a hierarchy of enforcement for trademarks. Trademarks that are not registered do not hold the same type of enforcement power as registered trademarks. Intellectual property rights during a pending trademark registration are no greater than before the trademark application was filed and it is possible to actually lose intellectual property rights while an application is pending. The intellectual property attorneys at Polymath Legal PC help entrepreneurs and businesses establish and protect their brands with registered trademarks. Call 833-931-6418 to learn more about the trademark registration process and what to do while your application is pending.
When Does a Trademark Become Effective?
A trademark does not need to be registered at the state or federal level to be recognized as belonging to a particular product or service and given limited protection under the law. A trademark becomes effective through use and association with the sale of a product or service. An unregistered trademark is afforded some legal protection within the geographic area where it is used.
Registering a trademark at the state level gives the right to exclusive use of a mark throughout the state. Registering with the United States Patent & Trademark Office (USPTO) gives the right to exclusive use of a mark throughout the country. An unregistered trademark that has been in use in a particular geographic area may be able to successfully defend the right to be used exclusively in just that area but a registered mark will have superior rights of enforcement anywhere else.
When Trademark Symbols Can be Used
There are several symbols that can be used with trademarks to put people on notice that a particular mark is a trademark. TM is the symbol used to indicate a trademark for a product. SM stands for service mark and can be used with a trademark for services. Trademarks do not need to be registered to use either TM or SM according to the International Trademark Association (INTA). The ® symbol can only be used with trademarks after they are registered with the USPTO.
Why a Trademark Filing Date is Important
Filing dates generally determine priority in trademark registration and priority can mean the difference between getting a trademark registered and having to make a bunch of changes or start the process over. In most instances, once a trademark becomes registered, its effective date is retroactive back to the date the application was filed and it can be enforced as of the filing date.
Pending trademark applications can be designated as abandoned by the USPTO which may remove the priority of a filing date. If requested information was not provided or was incomplete as of the filing deadline, a notice of abandonment will be issued. An abandoned trademark application can be revived under certain conditions and the original filing date will be preserved. However, if a later filed application with a conflicting mark gets registered while a pending application is in abandoned status, the registered mark of the later-filed application will have priority.
Trademark Enforcement Rights while Registration is Pending
After a trademark application is filed with the USPTO there will be a period of time before the application is reviewed by an examining attorney. The reviewing attorney may request additional information or may identify conflicts where changes need to be made. The process can take close to a year before a trademark achieves registered status.
A pending trademark can still be used but if someone else starts using a very similar mark there are no grounds for enforcement before a trademark has been officially registered as belonging to a specific product or service. If an examining attorney identifies conflicting marks between pending trademark applications, the mark with the later filing date will be suspended until the mark with the earlier filing date is either registered or abandoned.
Can Someone Else Stop You from Using Your Trademark While it is Pending?
The USPTO is required to make trademark records available to the public. If the owner of a registered trademark believes a pending trademark is an infringement because it is too similar the owner can bring a lawsuit and may be able to stop any further use of the pending trademark.
In order for an infringement challenge to be successful, a trademark must not only be confusingly similar to one that is already registered but it must also be associated with similar goods or services. In addition, the USPTO says courts will likely consider:
- How and where the goods or services are advertised, marketed, and sold
- How the goods or services are purchased
- Who are prospective purchasers of the goods or services
- Any evidence of actual confusion caused by the infringing mark
- The strength of the plaintiff’s mark
- The intent behind the infringing mark
Protecting Your Intellectual Property Rights During a Pending Trademark
The best way to protect your intellectual property rights during a pending trademark is to be thoroughly prepared before filing the application. Searching for conflicting marks, properly completing the trademark application, and making sure to include the necessary supporting documentation will help to ensure that the selected mark has the most favorable chance of being registered without delays or additional expense.
Establishing a brand and building a successful business requires starting with a solid foundation. Your trademark is the calling card for your business and it needs to be recognized and protected. The legal team at Polymath Legal PC will do the research to make sure a trademark is eligible for registration, complete and file the application, and handle any issues in a timely manner so that a trademark can be registered as efficiently as possible. Have questions about registering a trademark? Call Polymath Legal PC at 833-931-6418.