November 9, 2022
You may have heard of some of the benefits of registering your trademark with the United States Patent and Trademark Office. However, which of these benefits apply to a pending trademark? Is there any advantage you gain by filing a trademark application? Additionally, what is the difference between filing for federal registration versus a state registration or common law rights? A knowledgeable intellectual property lawyer from The Mindful Counsel can walk you through this process and answer any questions you have when you call (480) 422-6246 and schedule a confidential consultation.
The United States Patent and Trademark Office (USPTO) describes a trademark as any symbol, design, word, phrase, or combination of any of these that identifies someone’s goods or services. The purpose of a trademark is to help a business differentiate their goods, services, or business from others’.
The USPTO process to obtain a trademark is long and involves many steps. including:
Until you have fulfilled all of these steps, your trademark application is pending. After the allowance is issued, you will also need to file a timely statement of use and maintain your registration to protect it in the months and years to come.
There is a certain degree of protection for pending trademarks. You can use a trademark to indicate a pending trademark to claim your design to the world. This can help inform others of your use of the mark and hopefully deter them from using the same mark or a similar mark for their own goods or services. However, you will not be able to enforce intellectual property rights until your trademark is officially registered.
The rights you have while your trademark is pending are not quite as comprehensive as those you have with a registered trademark. When you use the symbol TM or SM next to your logo or other symbol, this indicates your trademark is in pending status. It also shows your competitors that you have applied for trademark protection. It also makes others in the industry aware of your ownership of the design. Your application holds your place in line and might prevent someone else to file a similar trademark.
You can legally use your logo before you receive the trademark. However, it is still possible that you could be infringing on someone else’s trademark.
If you and another design owner submit trademark applications around the same time for conflicting marks that could potentially cause confusion to consumers, the trademark in the application with the earliest effective filing date is the one that will be published in the Official Gazette. The other application will be suspended until the other trademark application is registered or abandoned. That application cannot be refused registration until the application that was filed earlier is registered.
If trademark applications are based on intent to use and an application is amended to the Supplemental Register, the allegation of use filing date applies. The USPTO does not amend the original filing date in its database.
Priority status is also confusing if an abandoned trademark application is revived or reinstated. If an application is later filed, the one that had been abandoned and revived would now have priority.
For these reasons, it can be confusing to determine the effective filing date of a trademark application. A knowledgeable intellectual property lawyer from The Mindful Counsel can help explain your rights while the trademark is pending.
While it is important to understand what rights you have while you have a pending trademark, it is just as important to understand what rights do not immediately apply. For example, you do not have the right to:
This does not mean that it is not worth the process or expense of registering your trademark. However, it is important that you understand the limitation of your rights while your trademark is pending and also that you realize why it is important to finish the registration process.
The rights you receive upon registration are broader and more significant once your trademark is registered. While you can receive certain “common law” rights when you begin using a trademark, obtaining a federal registration provides the following benefits:
While your rights are limited during the pending status, once your rights are granted, they are retroactive in nature. Therefore, if you file your trademark on January 1 of the year and it is granted in October, you can enforce your trademark from action occurring since January 1.
If you are considering registering your trademark, the intellectual property lawyers from The Mindful Counsel can help. You can learn more about your rights with a pending trademark by calling (480) 422-6246 and requesting a confidential consultation.
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