How to Acquire United States Trademark Rights

In the United States, unlike many foreign countries, trademark rights stem from use, not from registration. Use of your trademark must be “public,” however, and must be used to designate certain products and/or services. The mark cannot simply be a “project name” or a name used internally between company employees.

Actual sales may not be necessary to create trademark rights. Pre-sales activities, such as attending trade shows, placing advertisements and giving product presentations to prospective buyers may be enough to establish trademark rights as against subsequent users of the same or confusingly similar mark. However, a federal trademark registration will not issue until your mark has been put to use in connection with the actual sale of your products or carrying out of your service.

While registration is not required to create trademark rights in the United States (and in certain other countries), securing federal trademark protection is a best practice and carries with it certain valuable rights, presumptions, and remedies for trademark infringement. Even if a mark has not yet been put to use, a federal trademark application may still be filed on an “intent to use” basis, thereby potentially reserving rights in that mark for your company. That holds true even if a competitor were to begin use of the same or confusingly similar mark after the filing of your application but before your company’s use of the mark.

Planning ahead and properly clearing marks and filing “intent-to-use” federal trademark applications at least four months in advance of product launches is a recommended strategy for securing rights in marks before their actual use. That strategy may also avoid the all too common last minute scrambling to find available names.  You know, that last-minute Friday afternoon exercise of “the product launches on Monday and we really really really need you to approve this name, Roger!”

Yeah, that one.