Intellectual Property Rights During A Pending Trademark

The process to register a trademark can take time. This may cause issues for businesses because it can mean that their intellectual property is not fully protected. Nonetheless, there are steps that businesses can take to maximize their protection. For instance, the United States Patent and Trademark Office (USPTO) has a basic factsheet about trademarks to help businesses get started with the process. However, for advice about pending trademark rights specific to your situation, consider consulting with an experienced trademark attorney from Grabbe Law Office by visiting our website to schedule a free 15-minute consultation, or by calling us at (785) 621-4711.

What Kind of Intellectual Property Does a Trademark Protect?

A trademark is just one way to protect intellectual property (IP). Businesses use trademarks for words, phrases, and designs that represent their own products or services and distinguish their goods from those of a competitor. Other ways to protect intellectual property types include  patents (for technical inventions) and copyright (for artistic works). Business owners, when unsure which type of protection they require, may want to use the USPTO IP Identifier.

What Does Trademark Pending Mean?

A trademark is pending when a business has submitted an application for protection with the USPTO but has not yet received trademark protection. This stage often lasts from eight to 12 months. During this time, businesses are allowed to use trademark symbols, TM for trademark and SM for service mark. Although they signify that the company has a trademark pending, there is no need for a business that is waiting to receive approval to use the symbols. However, despite having no legal weight, they do have some benefits. They show consumers and competitors that the business is claiming the trademark as part of its branding. This can help familiarize customers with the brand and prevent other companies from using the same or similar imagery or wording.

Once the USPTO has issued a trademark registration certificate, the business can start using the ® symbol. In fact, trademark owners may want to use the registered symbol to support cases of trademark infringement. If there is law that suggests that if the competitor knew the business had trademark protection, it may be easier to prove trademark infringement.

Common Law Rights

While a trademark is pending, the business does have some pending trademark rights called common law trademark rights. Although these are not as extensive as registered trademark rights, they can protect the business in case of infringement during a pending trademark. One limitation of common law trademark is that it is only valid in the geographical area where the company is currently based and where it could reasonably expand.

To gain protection, a business must enforce its own pending trademark rights. This includes opposing the use of a similar mark by a competitor within five years. Waiting longer than five years could mean forfeiting the right to the trademark to the competitor, regardless of who filed first. To oppose a mark, the business should first send a cease and desist letter to the competitor. If the competitor refuses to stop using the mark, it may be necessary to pursue a lawsuit in order to settle the matter. If your business finds itself in this position, a skilled trademark lawyer from Grabbe Law Office may be able to help.

How To Prove Who Deserves Exclusive Use of a Trademark

The procedure that a business will use to prove that it deserves exclusive use of a mark is the same when a trademark is pending as when the trademark is registered. The business must show that it has a history of using the trademark and that consumers associate the mark with the company.

Businesses are not able to take any legal action until the trademark registration is complete. However, if a trademark owner can provide evidence that a competitor used the mark while it was pending, the owner may have the right claim infringement spanning back to the original filing date.

This means that, once a trademark is formally registered, the business may be able to claim profits and statutory damages. A trademark owner may even claim for the cost of legal fees from the infringing party, something that is rarely possible with pending trademark rights. If the competitor is found to have been engaging in willful infringement, the business may receive triple damages.

How To Avoid Trademark Conflicts

Business owners also need to be aware of the risk that they could be accused of trademark infringement if they accidentally use a mark that is similar to that of a competitor. The following are two main steps that businesses can take to protect their intellectual property and avoid accusations of infringement.

Perform a Trademark Search

Research registered and pending trademarks to ensure your intellectual property does not already have a trademark, including federal, state, or common law. The USPTO website features a list of trademarks, but this is only useful for researching federally registered marks. Businesses should also check the official trademark website for their state and other states.

The most challenging aspect of this research, however, is finding common law trademarks, as these are not included in databases. Searching for similar domain names, checking business directories, and conducting online searches for related keywords is useful for completing a thorough trademark search. An experienced trademark attorney can help conduct the search, so schedule a free 15-minute consultation, or call Grabbe Law Office at (785) 621-4711 today.

Apply Early

When a business owner is confident that a trademark is not already registered or pending registration, he or she should apply for registration as soon as possible. Waiting only a few months could be too late. The good news is that, when more than one business applies for the same mark, the USPTO usually awards the trademark to the party that applied first. Submitting an application soon after conducting a search can, therefore, prevent a business from losing a mark to a competitor.

Contact an Attorney for Legal Support for Trademarks Today

If you have a trademark pending, being clear about your pending trademark rights can help to protect your intellectual property during that time. Prior to applying, however, in-depth research for the mark is essential. An attorney may be able to help with areas of this process that a business owner may find difficult to do alone. In addition, a lawyer may handle a variety of issues, including litigation and opposition to registration. If you are ready to register your mark, consider contacting an experienced trademark attorney from Grabbe Law Office for a complementary session by clicking schedule a free 15-minute consultation, or call Grabbe Law Office at (785) 621-4711.