Securing a Trademark

by | Oct 24, 2023 | LinkedIn Newsletter, Trademark

Securing a Trademark Before Launching Your Brand

LinkedIn Newsletter – by Steven Weigler

Did you know that Kim Kardashian just secured her daughter North West’s name as a trademark for cosmetics before even launching the cosmetics brand?  In fact, many, if not most, famous brands secure the naming rights with trademark protection before product launch.  By doing so, they alleviate the risk they would be stuck with a branded product that is perhaps unprotectable or even sued.

How can you file a trademark before launching a product or service? The Lanham Act allows for a party to file a trademark application when there is bona fide intent to use a mark connection with the goods or services listed in the application, even though actual use has not yet taken place.

The process starts the exact same as an “actual use” application with a few additional steps. First, the USPTO examining attorney examines the application. If the application survives examination, it is published for opposition. If no one opposes the mark, the USPTO issues a Notice of Allowance (“NOA”) (as opposed to a registration which is what would occur in actual use). After the NOA, the application reverts back to the applicant to file within 6 months an Amendment to Allege Use or a Statement of Use, along with appropriate evidence showing that the applicant has used the mark in commerce on or in connection with the goods and services listed in the application. A USPTO paralegal examines the specimen and, if approved, issues the registration. An applicant can also file an Extension of Time to Allege Use up to five times.

There are potential risks to filing an intent-to-use application.  First, because there are additional procedural steps (and the USPTO charges a fee for each filing), it is more expensive than an actual use application. Second, because a filing party is providing record notice before actually using the mark, if the mark clearly confuses with a senior unfiled mark (or a mark that the USPTO examining attorney hadn’t seen an issue with), it could lead to potential USPTO or even infringement litigation down the road.

For example, if I file an intent to use application for my initials SHW for legal services, the USPTO allows it through, but some other attorney with the initials SHM thinks it confuses with their name, which was in use before mine; we still have issues. Third, sometimes, the product launch plans change and deviate from what was originally identified in the application, which is tricky to correct.

In summary, I generally think filing an intent-to-use application is a great idea. But there needs to be a thorough strategy and search (both at the USPTO and common law), and a thorough strategy to get that mark through. In summary, the intent-to-use application is a great tool in a brand and market protection toolbox. But like any complex tool, it should not be considered one for amateur hour.

Our TotalTM process is built to provide technologically advanced trademark searches combined with skilled attorney advisory, all at a predictable and fair price point. Contact us to discuss your intent to use a trademark strategy.


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