We’ve fielded many inquiries from businesses and brand developers, asking: do we need to file for trademark registration before we use the “brand” or “logo” that we are hoping to trademark?
The answer, at least for trademarks, is no. (Patents and copyrights—other federal forms of intellectual property protection—are governed by different federal laws and should be considered separately.) In the United States, the Trademark Office provides applicants the opportunity to file for trademark registration either on the basis that the brand, logo or mark currently has “use-in-commerce” or that the applicant has a sincere prospective “intent-to-use” the mark in commerce. There are no substantial differences between these bases in the way the Trademark Office examines applications for trademarks (there are procedural differences, but the end result can be the same). While one doesn’t need to be using the trademark before filing an application, one does need to show actual, commercial use of the trademark before it can be properly registered by the Trademark Office (the Trademark Office affords ample time to establish this commercial use of the brand/mark).
While there can be a delay between filing a trademark application and actually making commercial use of the trademark (before registration), one can also take the opposite tack and make commercial use of the trademark for a period of time before filing a trademark application to seek to secure nationwide exclusive rights. While this delay is conventionally fairly brief (e.g., the application is typically filed once the product or service and brand/logo are launched and viable, and the initial success, sustainability and market value of the brand/logo are recognized), there are times when fairly long delays take place for a brand/logo before a trademark application is filed (this sometimes happens when less salient or less deliberate aspects of a branding effort become associated with the brand and “acquire distinctiveness” over time).
Recently, the Trademark Office granted registration of the green jackets worn by Masters’ champions (e.g., Tiger Woods, Tom Watson) to August National, Inc. (the source and host of the Masters major golf tournament). See U.S. Trademark Registration No. 6,000,045 (Mar. 3, 2020). While this trademark application was filed in February of 2019, the green jackets had been used by Augusta National as an award since at least the 1949 tournament.
This demonstrates that not only can one file a trademark application before using a brand or trademark, but, at a seemingly polar opposite extreme, one can instead publicly use a trademark for a very significant duration prior to filing a federal trademark application and still successfully secure a registered trademark. Either approach is viable and either approach can lead to nationwide exclusivity for your brand/trademark. If interested, we can work with you to determine how best to pursue and secure trademark rights in your brand.
