Can I File For a Trademark When I Launch My Business?

Some entrepreneurs believe that one of the legal issues they must address when they launch their business is to register their trademark. However, what they often don’t realize is that, at the beginning of their business, they have no trademark to register. Unlike copyright, which is acquired when a work is fixed into tangible form (i.e., when you write a story, paint a painting, compose a song, etc.), trademark rights are acquired through use. Like copyright, it is not necessary to register a trademark in order to have trademark rights. However, registration does provide several important benefits, such as jurisdiction in the federal courts, statutory damages, and constructive notice to other parties. But until a company actually uses a trademark in commerce, they do not have trademark rights, and therefore cannot register a trademark. However, the Trademark Office does allow companies to file an “intent-to-use” application, which essentially allows a filer to reserve a trademark for later use. Companies often use intent-to-use applications to reserve names and slogans for products and services that they are developing, but have not yet launched into the market. Note that an intent-to-use application does not grant the rights of an actual use application — it is merely a reservation system. A company that files an intent to use application must then update their application to an actual use application by submitting an example of the trademark in use within 6 months — a company may file for a six-month extension as of right, and then may only file for additional extensions with the permission of the Trademark Office. So while a company can file a trademark application when a business is being launched, the application must most likely be an intent-to-use application; the company can only update to an actual-use application and gain trademark rights when the mark is actually used.

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