Introduction
Securing federal trademark registration with the USPTO is a key step in protecting your brand’s identity. However, the registration process can take years. During this waiting period, trademark applicants often wonder what legal protections they have if someone else uses the mark, or something confusingly similar to it, before the USPTO officially grants federal registration. While federal registration confers significant benefits, there are still multiple levels of protection—such as common law rights, state registration, and the legal doctrine of passing off—that can help brand owners enforce their rights in the interim.
1. Common Law Trademark Rights
What are they?
Common law trademark rights automatically arise from the actual use of a mark in commerce. You do not need to register your mark at the federal or state level to have these rights. By simply using your mark in connection with the sale of goods or provision of services, you establish certain “use-based” rights in the geographic areas where you do business.
Advantages
- Immediate Protection: Common law rights arise as soon as you use the mark in commerce, even if your federal application is still pending.
- Basis for Enforcement: You can bring a lawsuit for trademark infringement under unfair competition laws if someone else uses a similar mark in a way that causes consumer confusion.
Disadvantages
- Geographically Limited: Common law rights typically extend only to the markets or regions where you can demonstrate actual use and brand recognition.
- Burden of Proof: In a legal dispute, you must prove both your ownership (priority) of the mark and that it has accrued distinctiveness in that region.
2. Passing Off and Unfair Competition
What is passing off?
“Passing off” is a form of unfair competition that occurs when one party attempts to benefit from another’s established brand reputation by using a confusingly similar mark or presentation. It essentially misleads consumers into thinking the infringer’s product or service is associated with, or endorsed by, the original brand.
Legal framework
Passing off can be pursued under federal law (the Lanham Act) as well as state unfair competition statutes. To succeed, a plaintiff typically needs to show:
- Ownership of a valid mark or protectable trade identity.
- Defendant’s Use of a similar mark or trade identity in commerce.
- Likelihood of Confusion among the relevant consumer base.
Why it matters while your mark is pending
Even without a federal trademark registration number, if you have been using the mark and built goodwill, you can take action under passing off or unfair competition laws. Showing you were first to use the mark and that consumer confusion is likely can establish a basis for an injunction or damages.
3. State Trademark Registration
Overview
Many U.S. states have their own trademark registration systems. These registrations are typically less extensive in scope than a federal registration. However, they can provide publicly recorded evidence of your trademark rights within a specific state. This can sometimes deter potential infringers and strengthen your position in local disputes.
Key benefits
- Public Record: Having a record of your trademark at the state level can make it easier to prove priority.
- Additional Remedies: Some states grant certain statutory remedies or presumptions for trademark owners that can be helpful in enforcement actions.
Considerations
- Limited Geographic Scope: Protection typically extends only within the state’s borders.
- Overlap with Federal Application: If you plan to sell goods or services across state lines, federal registration provides broader benefits. However, a state registration may be useful during the waiting period—or if you are operating primarily in one state.
4. Federal Trademark Pending Rights
Intent-to-Use (ITU) applications
If you filed an Intent-to-Use application (rather than a “use in commerce” application), you do not have established common law rights yet (unless you have also been using the mark separately). However, the filing date of your ITU application can become your “constructive use date” once the trademark is registered, meaning you can rely on it for priority in disputes against later users.
“TM” vs. “®”
- TM Symbol: You may use “TM” (for goods) or “SM” (for services) next to your mark even before registration. This can help put the public on notice that you consider the mark a source-identifier.
- Registered Trademark Symbol (®): You may only use the federal registration symbol after the USPTO has actually granted your registration.
5. Practical Enforcement Measures While Pending
- Monitor Your Mark: Keep an eye out for unauthorized use. This may involve monitoring e-commerce sites, social media, and your industry’s marketplace.
- Send Cease-and-Desist Letters: If you discover an infringer, a well-drafted letter asserting your common law rights (and, if applicable, state registration) can often resolve issues without litigation.
- Maintain Evidence of Use: Retain sales records, advertising materials, and other documentation to show how long and where you’ve been using your mark. This is critical for establishing priority.
- State Registration: If you are experiencing repeated local infringements while awaiting federal registration, consider state registration for extra leverage.
- Consult with a Trademark Attorney: If you suspect infringement or receive a challenge to your pending mark, professional legal help can clarify your options and improve enforcement outcomes.
Conclusion
Although waiting for federal trademark registration can feel like being in limbo, it does not leave you entirely unprotected. Common law trademark rights, the legal doctrine of passing off, and state trademark registrations all offer avenues to protect your brand while your federal application is pending. By actively using your mark in commerce, documenting that use, and vigilantly monitoring for infringements, you can build a strong foundation for your eventual federal registration—and enforce your rights along the way.