Do I Need to Sell a Good or Sell a Service to Obtain Trademark Rights?

Watson IP Group

Watson IP Group

Yes. A clever name or slogan or logo without the sale of goods or services is not a trademark. To obtain a Federal Registration, meaningful usage (as opposed to a token use) through interstate commerce must be proven through submission to the USPTO.

There is a requirement of sales through interstate commerce, that is, commerce between the states. This requirement can be met many different ways, as the reach of commerce clause has been interpreted broadly. For example, a single restaurant location can qualify for interstate commerce.

Of course, one does not need to be selling a good or service at the time of filing of the trademark application. A trademark application can be filed as a bona fide intent to use trademark application. The application can proceed through all of the steps of the application process, but, a registration will not issue until proof has been supplied that the mark is in actual use in interstate commerce.

The applicant typically has six months from the issuance of a notice of allowance, in the case of an intent to use application, to provide proof of use to the USPTO. And, generally, it takes a period of at least three to four months (and typically more) before a notice of allowance is received. Therefore, from the filing date to the initial deadline for proving use may be close to a year, and in some cases more than a year. And, if that is still not enough time, multiple extensions of time can be obtained. In the US, a total of six extensions of time can be obtained, with each extension being a six month extension of time. So, ultimately from the notice of allowance date, a total of three years of extensions can be obtained.

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