Trademark experts Cheryl Hodgson and Bill Finkelstein discuss should a startup register a trademark?
Cheryl Hodgson: How does one actually acquire trademark rights? We talked a little about Europe or the rest of the world where use is not required to register. In the United States, traditionally had that rule up until a number of years ago. Now we have a two step way of acquiring rights. One is based on I intend to use it. The second is I’ve actually already used it which can be a little confusing for clients at the beginning.
Bill Finkelstein: The idea was that the idea of changing to a bifurcated system that gives you the option of intend to use, is what would happen is let’s say you’re going to build a hotel. That could take three years. Or you want to launch a new drug product. You have to get FDA approvals. If you only could file after you’ve used, someone else, especially if it’s a dictionary term or something other, a surname or geographic name, someone coincidentally could file.
Cheryl: That happens all the time.
Bill: It does happen all the time. We had to come up with a way to protect people while they were in the development stage, and came up with this intend to use system so that if you have a bona fide intent to use, you can file a trademark application, and basically have three to four years to develop your product, test market it, get it out there, etc. Then once you use it, you can protect your registration in the United States. Eventually, you’re going to have to use it to protect it.
This gives everybody the ability, as soon as they think of something, and indeed, like I said before, they have a legitimate connection that this is the business they’re in or about to be in. There have been situations where people have filed applications just because they thought it was a really cool thing to do, and they just sat on it, and never developed the business, never had that kind of expertise, never did a thing. Those applications were taken away from them.
Cheryl: At some point, in the United States, you do have to step up to the plate and prove that you’re selling the goods in commerce.