Actual and Intended Use of Trademarks

Trademark rights are legal rights acquired based upon actual use of a mark rather than by registration. Generally, the first party who uses a mark in commerce has the right to use the mark in that geographic area as well as in the natural zone of expansion for that geographic area. Any shipment of goods bearing the trademark across a state line in the normal course of business satisfies the “use in commerce” requirement. Token sales made solely to establish trademark use do not constitute legally sufficient “use.”

The party using a mark in commerce may protect their mark by filing a trademark application. However, if a mark is not actually currently being used, but someone has the future intent, “bona fide intent,” to use the mark in the future, the mark may be secured with an “Intent to Use” trademark Application with the United States Patent and Trademark Office (USPTO). The filing of an Intent to Use Application essentially reserves the mark in incremental periods of six months. Thereafter, the USPTO must be satisfied that the mark is being used or the right is lost.

Sometimes a state registration is filed by someone who is using a mark locally. In some cases, this registration can have some strategic benefits, but does not give additional legal benefits to the registrant other than what is gained by actually using the mark in commerce. State registration also does establish a date of first use and puts the world on notice of the registrant’s use of the trademark.

Based upon relatively recent international treaties, US registration is not required to establish rights in a trademark, trademark rights arise from actual use of a mark. However, there is a presumption that the first to either use a mark in commerce or file an application related to a trademark has the right to use and register the trademark. Therefore, registration offers several strategic, competitive and legal benefits which may not otherwise be available to the party without registering the mark.

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