Trademark Protection: The Power of Registration and Understanding "In Commerce" vs. "Intent to Use" Applications

Introduction

In the ever-evolving world of business, trademarks play a crucial role in establishing brand identity and protecting intellectual property. A trademark is a valuable asset that distinguishes your products or services from those of competitors, and it's vital to safeguard it from infringement. One key aspect of trademark protection is registration. In this blog post, we will delve into the importance of trademark registration, the distinctions between "in commerce" and "intent to use" applications, and the supplemental registry for trademarks that do not qualify for the primary registry.

The Significance of Trademark Registration

Trademark registration is a critical step for any business looking to establish a strong and legally defensible brand presence. While common law rights exist for unregistered trademarks, registering your trademark with the United States Patent and Trademark Office (USPTO) offers several key advantages:

1. Presumption of Ownership: Registering your trademark provides a legal presumption of ownership, making it easier to prove your rights in case of disputes or litigation.

2. Constructive Notice: The registration of a trademark obviates evidentiary proof required to demonstrate actual notice to any potential infringers in an infringement action.

3. Nationwide Protection: A registered trademark provides exclusive rights to use the mark nationwide, preventing others from using a confusingly similar mark for related goods or services.

4. Enhanced Import Enforcement: Registered trademarks can be recorded at the US Customs and Border Protection providing the owner the ability for Customs to seize infringing goods before they enter the US.

5. Foreign Filings: Registration can be used as the basis for filing international trademark applications for most of the developed world.

6. Statutory Damages: When the registrant successfully asserts a trademark infringement action, it is possible to obtain increased statutory damages.  15 U.S.C. § 1117 and 18 U.S.C. § 2320.

Understanding "In Commerce" vs. "Intent to Use" Applications

When applying for trademark registration, it's essential to distinguish between "in commerce" and "intent to use" applications:

1. In Commerce Applications: An "in commerce" application is filed when the mark is already being used in connection with the sale of goods or services. This means that the trademark is actively used in the interstate marketplace. These applications are generally stronger because they demonstrate actual use and protect against the likelihood of consumer confusion.

2. Intent to Use Applications: Conversely, an "intent to use" application is filed when the applicant has a “bona fide” intention to use the mark in commerce but has not yet done so. This type of application allows businesses to secure their trademark rights before launching their product or service. Once approved, applicants have a limited time to provide proof of use.

Both types of applications have their advantages and disadvantages. "In commerce" applications provide immediate trademark protection based on actual use, while "intent to use" applications allow businesses to reserve rights for a future launch.

The Supplemental Registry: An Option for otherwise impermissible Trademarks

Not all trademarks qualify for registration on the Principal Register. Some marks may be refused registration for various reasons, such as being too descriptive or generic. However, the USPTO offers an alternative option known as the Supplemental Register, which is often an overlooked but valuable tool for trademark protection.

Here are some key features of the Supplemental Register:

1. Distinctive but Not Fully Distinctive: The Supplemental Register is designed for marks that are not inherently distinctive enough for the Principal Register. These marks may include descriptive or generic terms.

2. Protection and Benefits: While marks on the Supplemental Register do not receive all the benefits of the Principal Register, they still enjoy some level of protection. This includes preventing others from registering confusingly similar marks, the right to use the (R), the ability to file a legal complaint for infringement, and establishing a public record of your claim to the mark.

3. Path to Principal Register: Marks on the Supplemental Register can become eligible for the Principal Register over time if they acquire distinctiveness through continuous and exclusive use in commerce.

4. Use in Commerce Required: To register a mark on the Supplemental Register, it must be in use in commerce, similar to "in commerce" applications. Proof of use is necessary to secure a place on this registry.

Conclusion

Trademark protection is a crucial aspect of brand management and intellectual property safeguarding. Registering your trademark provides numerous benefits, including nationwide protection, a presumption of ownership, and enhanced enforcement options. It's essential to understand the distinction between "in commerce" and "intent to use" applications when seeking trademark registration to tailor your strategy to your specific circumstances.

Moreover, the Supplemental Register offers a valuable alternative for trademarks that may not qualify for the Principal Register. While it does not provide all the benefits of the Principal Register, it can still offer protection and serve as a stepping stone to full registration. Understanding these aspects of trademark law is vital for any business looking to build and protect its brand identity in today's competitive marketplace.