Yes and no. An applicant for trademark registration must eventually sell some products/services in interstate commerce to obtain a fully registered trademark. However, the application process can begin before the first sale.

There are two types of applications for trademark registration. One type is called an “intent-to-use” application. As the name implies, this type of application is “future-looking” in that the applicant admits that there is no current use of the trademark but that the applicant intends to use the relevant trademark in the near future. Consequently, an intent-to-use application can be filed at any time and does not require a sale of the relevant product/service before approval by the U.S. Trademark Office. However, approval is provisional and contingent.

The Trademark Office will issue a provisional approval of the trademark for registration, and then, the applicant will have about a year to complete the registration process. The amount of time can be extended through the filing of various requests for extension of time. Completing the process involves initiating sales where the trademark is used and then submitting to the Trademark Office specimens of use. If these are sufficient, the application “ripens,” and the Trademark Office will then take the final step and issue a Certificate of Registration.

In further explanation, under U.S. trademark laws, there are a large number of legal requirements for registration of a federal trademark. Two of the most important are that the trademark be used in commerce and be used in interstate commerce. These are separate requirements. The first — use in commerce — is the basic requirement for a trademark. By definition, trademarks are for commercial transactions. For a trademark to be used — or “in-use” — the trademark must be attached to the product or the packaging being sold or used in various ways with the provision of services.

The second requirement — use in interstate commerce — arises from the federal nature of our governmental system. For a federal trademark registration, the sales must cross State borders. Otherwise, a business must file for a trademark registration under State trademark laws.

When an applicant files for a federal trademark registration, the applicant must provide proof of use of the trademark. This is done by providing the Trademark Office with “specimens of use.” This is often done with photos of the product where the trademark is used or of the trademark being used in advertising and signage with respect to services. Without acceptable specimens of use, the Trademark Office will not approve a trademark application. Typically, this is straightforward with a “use-based” application. However, with an intent-to-use application, the rovision of specimens of use must wait until the trademark is being used and sales are occurring in interstate commerce. Note that an intent-to-use application will be deemed abandoned if the required specimens of use are not eventually provided.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.