When Should an Application for Federal Trademark Registration be Filed?

Trademark applications are typically based on three initial triggers or events. The first trigger is a company's decision to use a mark on a good or service that is being developed but not yet for sale. There is no need to actually wait until the goods or services are actually available in the mark, as it is possible to file for registration simply on an intent-to-use the mark in the United States. The second trigger is a decision to seek federal registration on a mark that is being used in commerce but is not yet the subject of a federal trademark application. There is no requirement that trademarks be registered before use, and unregistered marks may well be protectable as a common law trademark. The third possible trigger is a decision by an international company that is using the mark outside the United States to seek U.S. trademark protection. In ideal situations, this overseas mark was subject to applications in other countries under the auspices of the Madrid Protocol.

Thus, the timing for filing for a trademark depends largely on the status of the products or services that are associated with, or intended to be associated with, the mark. Likewise, the type of mark applied for depends on that status of the product or service as well. Typically, the sooner one files for a trademark, the better. But you can’t just think of a great name and file for a registration and sit on it indefinitely. In all instances, you must show a good faith/bona fide intention to use the mark in commerce or show actual use of the mark in commerce.

What is an Intent to Use Application?

If a company is planning on developing a product or service that does not yet exist, the company may file for the proposed mark before the product or service is available in commerce. Such an “intent to use” application secures with the applicant a “constructive-use” priority date. The applicant has six months from this date to file a statement of use, which includes proof that the mark is no longer merely intended for use in commerce but is in actual use. If necessary, the applicant may file up to five six-month extensions (or a total of three years, including the initial six-month period) to make such a statement of use. If the applicant cannot show actual use within this time period, the application becomes abandoned and the applicant will need to refile the application if registration is still sought. Thus, timing the filing date for an intent to use application registration may not seem terribly critical given the potential three-year period in which the applicant has to show actual use, but it is amazing how that three-year deadline can creep up on an applicant. So, plan accordingly and try not to “jump the gun” of your development cycle!

What is an Actual Use Trademark Application?

If a company can demonstrate actual use of a proposed mark in commerce, then the company may file for registration on the basis of actual use. The cost of filing an actual use application is about the same as an intent to use application, but the intent to use application also requires the submission of at least one “specimen” that shows the mark being used in commerce on or in connection with the associated goods or services (see our discussion on the additional costs associated with an intent-to-use application). To demonstrate actual use of a mark, the application is filed with a specimen showing such use. Specimens that are routinely accepted by the U.S. Trademark Office to show use include a product label or tag displaying the mark that is placed on the good or on the packaging, a digital image of the product with the mark affixed to it, and a digital image of a website page showing the product or service associated with the mark and a means for ordering the product or service. There are several other types of appropriate and acceptable specimens for showing actual use, but these are used less frequently.

Foreign Priority Applications

On a basic level, applications for registration of marks that originate in foreign jurisdictions follow the same requirements as applications for registration originating in the U.S. with one significant caveat, namely, that U.S. applications that claim priority from a previously filed foreign application or registration need not prove actual use of the mark in commerce.

To take advantage of this substantial benefit, the original foreign application must be filled no more than six months before the U.S. application, and must eventually become registered in the foreign country of origin. In addition, the country of origin must be a party to a trademark treaty with the U.S., such as the Madrid Protocol.

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