Can I Trademark Before I Sell the Product?

By Victoria McGrath

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.

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.

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.

Protect your brand. Register My Trademark Now

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.

Protect your brand. Register My Trademark Now
What Does "Date of First Use" Mean on a Trademark?

References

Related articles

Difference Between a Logo & Trademark

Trademarks include company names, logos, slogans and designs used to identify and distinguish a company's goods in its business trade. The physical mark can be a word, sign, symbol or design that identifies the trademark owner. A trademark must be a unique identifying mark, specifically associated with the goods or services that a company offers in commercial trade. One type of trademark includes the company logo. A logo can qualify as a trademark -- if it meets the minimum requirements. To qualify as a trademark, a logo must be a unique mark used to identify and distinguish the company's goods or services offered in the marketplace. Strong logos often become easily recognizable trademarks throughout society.

How to Fill in Your Electronic Trademark Application

The U.S. Patent and Trademark Office (USPTO) accepts electronic trademark registration applications online for trademark names, logos, slogans, images and other unique marks. The trademark must consist of an original mark, such as a word, sign, symbol or design. The trademark must also be used to identify the company’s products or services offered in the marketplace and to distinguish the company’s product or services from its competitors. Once the trademark is used in association with the product in commercial trade, the trademark automatically qualifies for basic trademark protection within the United States. Federal trademark registration is optional.

What Are the Four Parts to Obtaining a Trademark?

Your trademark tells your customers that your products come from you. It distinguishes your goods and services from those of others. You can select a word, phrase, symbol, design or any combination of these elements to serve as your trademark. The strongest trademark is a fanciful, made-up word or image that is not confusingly similar to another party's goods. There are four basic steps to obtaining a trademark.

File a Trademark Online. LegalZoom. Learn More.

Related articles

Are All Trademark Names Legally Protected?

All trademark names generally qualify for trademark protection. Basic trademark protections automatically apply to a ...

How to Trademark a Catchphrase

A catchphrase is a slogan or tagline that identifies a person, group or business. Often introduced into pop culture by ...

How to Get a Trademark for a Comic Book Superhero Character

Trademarks cover comic book characters' names and logos. Any character's name or logo used on products offered in ...

How to Trademark an Idea

If you have an idea for a trademark design that you want to use exclusively for your business, you should consider ...

Browse by category