No. You can use a trademark before registering it. Indeed, at least historically, trademarks were used long before they were officially registered as trademarks. That remains true today, in a manner of speaking, since using a trademark in interstate commerce is one legal requirement for registration (at the federal level). That is to say, before you receive a Certificate of Registration, you will have to provide “specimens of use” to the U.S. Trademark Office showing that your trademark has actually been used. This is even true for an intent-to-use application for trademark registration. If other legal requirements are met, a person filing an intent-to-use application will receive a Notice of Allowance allowing the applicant to begin using the proposed trademark. Sometime thereafter, the applicant must provide specimens of use, showing use of the trademark in interstate commerce. Thereafter, the Certification of Registration will be issued.

During any time that you are using a trademark that has not been registered, that trademark is legally protected. Such protections are considered “common law” trademark protections, and are sufficient to prevent others from using your trademark. Under the common law, an owner of an unregistered trademark has the right to sue for trademark infringement and seek monetary damages and injunctive relief to prevent another from using your trademark. However, using common law to protect your trademarks is decidedly suboptimal. You will have to use State courts and State law. The geographic scope of your protection is geographically limited, and you may end up with a priority-of-use problem nationally if others are seeking to use and register your trademark and/or are using your trademark in another geographic area. With respect to international legal protection for trademarks, because of the limitation in scope, a common law trademark will provide little assistance in obtaining international recognition and protection for your trademark.

After a trademark has been registered nationally, additional legal protections become available. These include:

• National geographical scope of the trademark — barring others from using your trademark across the nation, not just in localized areas
• National registration can be used as the basis for registration of the trademark in foreign nations
• Ability to enforce trademark in federal courts
• Availability of stronger remedies than the ones normally available under the common law, such as statutory damages and attorney’s fees in case of infringement
• Right to use certain reserved symbols (like the Circle-R symbol) that are only available to those with federally registered trademarks
• Right to assistance from customs and border authorities to combat piracy

So, in summary, you can use your trademark before registering it. In fact, instead of filing an intent-to-use application, there are advantages to using a trademark before applying for registration. Further, your trademark will have legal protections, but those protections will be less than the protections provided once the federal registration has been completed.

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.

Priority Rights and the Race to Register

The United States trademark system is a use-based system, which means that the first party to use a trademark in commerce — not the first party to file a registration application — generally has superior rights in the mark. This is different from the patent system, where filing date determines priority, and from trademark systems in most other countries, where registration filing date determines priority.

However, federal registration creates a legal presumption of nationwide priority as of the filing date of the application, not as of the first date of actual use. Under 15 U.S.C. § 1057(c), once an intent-to-use application is filed, the applicant’s constructive use of the mark dates back to the filing date if the mark is eventually registered. This “constructive use” doctrine effectively gives registered trademark owners priority over parties who began actual use of a similar mark in other geographic areas after the registration application was filed but before the registration issued.

The practical consequence: if you are using a trademark without registering it, and a competitor files a registration application for the same or a similar mark in another state, the competitor’s registration may cut off your ability to expand your geographic use of the mark beyond your existing trading area. The longer you delay registration, the greater this risk becomes.

The Intent-to-Use Application: Securing Priority Before Commercial Launch

The intent-to-use (ITU) application under 15 U.S.C. § 1051(b) is one of the most strategically valuable tools in trademark law. It allows a business to file a trademark registration application based on a bona fide intent to use the mark in commerce — before actual use has begun. Filing an ITU application accomplishes several important objectives:

• Secures a priority date immediately. Upon filing, the applicant’s constructive use date is established as the filing date. This date will be used to evaluate priority against any later-filed applications or uses by third parties — even if actual use of the mark in commerce does not begin for many months.
• Provides a window to prepare for commercial launch. After an ITU application is filed and examined, the USPTO will issue a Notice of Allowance if no opposition is filed during the publication period. The applicant then has six months to submit a Statement of Use showing actual use in commerce — with extensions available for up to three additional years upon showing good cause.
• Preserves the ability to raise issues with the mark before launch. If the Examining Attorney identifies a likelihood of confusion with an existing mark, that information is valuable before the business has invested heavily in marketing and brand development around the proposed mark. It is far less costly to modify a mark during the application stage than after a full commercial launch.

Section 2(f) and Acquired Distinctiveness Claims

Not all trademarks are registrable immediately upon first use. Descriptive marks — those that describe a feature, quality, or characteristic of the goods or services — cannot be registered on the Principal Register without proof of acquired distinctiveness under 15 U.S.C. § 1052(f). Acquired distinctiveness (or “secondary meaning”) exists when the mark has become distinctive of the applicant’s goods or services through substantially exclusive and continuous use in commerce over a period of time.

The USPTO presumes acquired distinctiveness where the applicant shows five years of substantially exclusive and continuous use in commerce prior to the date the claim is made. This five-year presumption can be rebutted. Alternatively, applicants can submit direct evidence of secondary meaning — consumer surveys, advertising expenditures, media coverage, and declarations from industry participants — to prove secondary meaning without waiting five years.

For descriptive marks that cannot yet establish acquired distinctiveness, registration on the Supplemental Register under 15 U.S.C. § 1091 provides some benefits — including the right to use the ® symbol and the ability to use the Supplemental Register registration as a basis for trademark registrations in foreign countries — while the mark builds the secondary meaning needed for Principal Register registration.

Maintenance and Renewal: Keeping Your Registration Alive

Federal trademark registration is not permanent without ongoing maintenance. Registrants must file:

• Section 8 Declaration of Continued Use — Filed between the fifth and sixth year after registration, and then with each renewal, confirming that the mark is still in use in commerce. Failure to file results in cancellation of the registration.
• Section 15 Declaration of Incontestability — Optionally filed between the fifth and sixth year after registration, providing that the mark has been in continuous use for five years. Incontestability significantly strengthens the mark’s legal status by limiting the grounds on which third parties can challenge the validity of the registration.
• Section 9 Renewal — Filed every ten years to renew the registration. These renewals must be accompanied by updated specimens of use demonstrating current commercial use of the mark.

Contact the Trademark Attorneys at Revision Legal

Whether you are using a trademark without registration, considering filing your first application, or managing an existing portfolio of registered marks, the Trademark Attorneys at Revision Legal can help you build and protect your brand. Contact us through the form on this page or call (855) 473-8474.