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Registering a trademark before using it in commerce

We often discuss the importance of proactively protecting intellectual property on this blog. For instance, conducting thorough research into a product design or name before going to market can be an easy way to prevent costly legal battles over trademarks and licensing.

This approach can indeed be preferable for entrepreneurs and creators, but there are situations in which anticipatory IP protection efforts may cause problems. Filing a trademark application before using the mark is one example of this.

Which comes first?

In general, parties use the material in commerce before seeking to trademark it. They may have designed a logo or packaged their products using distinct designs or colors.

However, using material is not a requirement for trademarking it. Those who have not yet used a mark can submit their application under an “intent to use” basis (ITU basis). Doing this can give one party trademark rights over a competitor that may also have an interest in the goods or services.

Good faith statement

If you file a trademark application under an ITU basis, you will make a sworn statement in your application that your intention to use the trademarked good or service is in good faith.

This may be all you need to protect yourself unless someone challenges your application. They might claim that you have no intention of using the mark, which could trigger legal challenges citing abandonment or bad faith.

To avoid this, parties would be wise to keep track of things like business activities and plans, sample products, and other details that prove their efforts to use the trademark.

Case in point

One example of how these scenarios can become thorny involves celebrity entrepreneur Kylie Jenner and the family of a 9-year-old girl. Both Jenner’s daughter and the girl are named Stormi, sparking a battle over the trademark registration of the name “Stormi Couture.”

Both sides argue that the other is seeking to trademark the name without a real intention to use it. Neither side has an existing product in use. The case is currently in front of a trademark hearing board.

In closing, planning ahead when it comes to protecting intellectual property is crucial. However, there are limitations and requirements that parties must still consider to secure creative works now and in the future.


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