Trademark Protection Best Practices For Tech Startups
The Federal Trademark Intent To Use (ITU) filing system in the United States Patent and Trademark Office (USPTO) is designed to give trademark Applicant’s constructive priority rights in a mark, logo or slogan, but also forces Applicants to show bona fide use of the mark in commerce within a statutorily imposed time limit.
In other words, Intent to Use (ITU) Applicants of Federal Trademark Applications are required to file a Statement of Use before the application matures to registration, for substantive trademark rights to legally vest.
While ITU Trademark Applicants are permitted Allege Use before a Notice of Allowance (NOA), the NOA starts an irreversible 3 year clock during which Applicants must file a Statement of Use, or an applicable Extension Request to preserve the applications and the priority rights of the filing date.
A Statement of Use declares the mark is in use in commerce and must be verified. The facts recited in the Statement of Use must be accurate, and accompanied by a specimen proving bona fide use in the ordinary course of trade. (Section 45 of the Trademark Act, 15 U.S.C. §1127).
If the mark is not in use in commerce before the expiration of the six-month period following the issuance of the Notice of Allowance, the applicant must file a request for an Extension Request to avoid abandonment of the application.
Tech startups or other brand marketing teams who take advantage of the Intent to Use filing system in the USPTO have an important advantage, and duty, when the Notice of Allowance issues. While the trademark is now approved for registration in the principal or supplemental registry of the US Patent and Trademark Office, the legal requirements under Section 45 speak to the heart of trademark law – use in commerce – and must be met in bona fide fashion before substantive trademark rights vest, and for the federal application to mature to registration.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal in 2014. Office: Ph: 310-751-0181; firstname.lastname@example.org.
Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2015. All rights reserved.
This post does not imply any affiliation with or endorsement by the USPTO. Please visit USPTO home page for more information.