Can I Trademark Before I Sell the Product?

by Victoria McGrath
Display your trademark on sample products at trade shows.

Display your trademark on sample products at trade shows.

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Since the federal trademark registration process takes several months, it makes sense to apply for trademark registration as soon as you design your mark while in the initial stages of product development. Your company can file a federal trademark registration application before you sell any products. You can also potentially secure common law trademark rights in your name, logo or slogan through actual use in the marketplace, such as pre-sale marketing. Under common law, a company automatically secures trademark rights once the original mark is used in association with its goods or services offered in the marketplace.

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Common Law Trademarks

Common law trademarks provide minimal trademark protection. The basic requirements for common law trademarks originated as unwritten law, established through the English legal system. Common law trademarks require an original mark identifying and distinguishing the company's goods or services, which must be offered in the marketplace. There is no specific requirement to sell your products in order to qualify for a trademark. The requirement is to "offer" your products in the marketplace with the intention to sell them. This requirement can be met by using your mark in pre-sale advertising campaigns and marketing materials. Common law provides exclusive ownership rights in the mark, unless someone else claims to have used the mark first. In that case, the federally registered owner prevails. Federal registration provides a legal presumption of ownership, as it is clearly documented in a public database.

Federal Registration

Even in the initial development stages of your business, you can reserve your rights to use your name, logo and slogans as trademarks through the United States Patent and Trademark Office. You should first conduct a thorough search on the Internet and in state and federal databases for similar names, logos and slogans. The USPTO maintains a database of federally registered trademarks and pending applications for trademarks. However, since state and federal trademark registration is optional and common law trademarks do not need to be registered, no database is all-inclusive. You might want to hire a company to conduct a trademark search before you proceed with the federal registration process.

Basis for Filing the Application

You can file an application for federal trademark registration under several bases listed under 15 U.S.C. Section 1051(b). You must state the specific basis for filing. The primary basis includes current "use in commerce" and the "intent to use" the trademark in the future. To file an application on the basis of "use in commerce" the trademark must actually be used in commerce prior to the filing date. The use of the trademark must be directly associated with products offered in commercial trade. An application based on an "intent to use" the trademark refers to a clear intention to use the trademark on goods in commerce at a future date.

Verified Statement of Intent

An application filed under an "intent to use" basis must be supported by a verified statement of a bona fide ("good faith") intention to use the trademark in commerce, specifically on the goods or services to be offered in commercial trade. A verified statement is a written statement signed by the trademark applicant, affirming he possessed this good-faith intention at the time of filing. His signature provides sufficient verification of his intention. The verified statement should be filed with the registration application; if it is filed after the filing date of the application, the statement must clearly allege the bona fide intention to use the trademark existed as of the filing date of the application.

Allegation of Use Statement

Trademark registration applications require supplemental documentation, including a drawing of the trademark, description of any stylized design marks, and product samples with the trademark on the products as offered in commerce. The trademark registration will take several months to process. Before the registration is complete, the applicant must file an allegation of use, or statement of use, that states the trademark is currently in use on goods or services offered in commerce. The registration further requires a specimen of each type of goods or services, with applicable filing fees. A specimen of services might include a printout of a web page that offers online educational services, such as after-school tutoring.