Trademark registration remains a mysterious process for most people. The average businessperson understands that trademark rights are important. However, there is a lot of confusion about whether or not they need to register their trademark with the United States Patent and Trademark Office. People are consumed about what constitutes “trademark rights,” how they need to go about filing an application for registration, what constitutes an appropriate specimen, what International Class (IC) of goods and services they should select and the intricacies of “use in commerce.”
One of the most common problems trademark attorneys encounter involves the very process of establishing a brand in the first place. Let’s face it. Coming up with a new brand is challenging. There are always lots of ideas about words and phrases until consensus can be reached. Once a brand is identified, It can take weeks, months, or years to roll the product or service out underneath that brand. So what does a company do to protect itself before it actually uses the brand in commerce?
The “use in commerce” requirement of trademark law is critical to understand. While you don’t need to register a trademark in order to have trademark rights, you typically do need to use the brand in commerce in order to obtain common law rights. It is possible for companies to protect their new brand from the date of inception through the date on which they start using the brand in commerce by filing a (1b) trademark application with the USPTO. A (1b) application essentially tells the world that you intend to use the mark in commerce and claim ownership rights therein. It essentially protects your brand while you are rolling out your product or service in commerce.
A Statement of Use must be filed within six months after the Notice of Allowance is issued by the examining attorney at the trademark office. The Statement of Use tells the trademark office and the world that you have in fact begun using your mark in commerce. Failing to timely file Statement of Use, or an Extension of Time to file that statement, can result in a loss of your trademark rights.
There is no limitation on the number of (1b) applications you can file. So any company narrowing down its potential brands to the top three can protect all three while they decide which one they will adopt. There are many war stories of major companies who created new brands, failed to protect the information concerning those brands, and immediately had domain names related to that new brand registered by cybersquatters. Thus, they actually lose the domain name related to the brand. A good trademark attorney will always advise their client to keep all new brands strictly secret until a (1b) application can be filed.