Registering a trademark with the United States Patent and Trademark Office (USPTO) can offer a number of advantages for individuals and business entities seeking to safeguard their exclusive rights to use and benefit from their intellectual property (IP). The complete application process, however, from compiling and submitting the initial application, to detailed review by a USPTO examining attorney, through efforts to resolve any USPTO Office Actions, to final registration in the USPTO Trademark Register, can take anywhere from several months to a few years. During this period, trademark owners may have concerns about how to document and enforce their intellectual property rights, especially if their brand is gaining notoriety through active use in commerce. If you have questions about how to protect your IP rights during a pending trademark, consider reaching out to an experienced intellectual property lawyer with Sullivan & Carter, LLP to discuss your needs. Our Chicago-based firm handles trademark cases from across the country, so call (929) 724-7529 today to set up a consultation with a member of our team.

Understanding Intellectual Property Rights

The World Trade Organization (WTO) defines intellectual property rights as rights that are "given to persons over the creations of their minds." Like other property rights, however, IP rights can be transferred (by gift, sale, or – under certain circumstances – inheritance). They can also be licensed or contracted – as when a business hires freelancers to develop software or create content.

What Does an IP Right Entitle a Person To?

Intellectual property rights are much like other property rights in that they entitle the holder to retain the property in question for their exclusive use, to exercise that right to use as they see fit as long as they do not infringe on the equal rights of others, and ultimately to dispose of the property by selling it, trading it in exchange for some other consideration, or giving it away, if they so choose. What makes IP rights different is the intangible nature of the assets to which they apply. A car or a house can be easily seen and touched; even investment stocks or bank accounts can be quantified and are typically represented in, or with, precise dollar amounts. Intangible assets, according to the International Financial Reporting Standards (IFRS) Foundation, are instead "identifiable non-monetary asset[s] without physical substance" under International Accounting Standard (IAS) 38.

Intangible Assets vs. Intellectual Property

Some forms of intellectual property, such as customer lists, are excluded from consideration as intangible assets for accounting purposes under IAS 38 because the accounting standard is aimed at ensuring accurate valuation of both the assets themselves and the costs involved in their creation and development. Generally speaking, however, intellectual property will be considered to constitute a category within the broad realm of intangible assets, as noted by the American Association of University Professors (AAUP).

The World Intellectual Property Organization (WIPO) rests its definition of intellectual property on the property's origins, calling IP "creations of the mind." For understanding IP rights, however, it is important to remember that in most cases "intellectual property" will refer to an intangible asset that is a product of the mind, not to physical goods produced on the basis of mental labor.

Types of Intellectual Property

Intellectual property comes in several forms. The property rights to these intangible assets, meanwhile, are protected under various forms of intellectual property law, which for convenience is often subdivided according to the different types of intellectual property addressed:

• Trademarks
• Copyrights
• Patents
• Trade secrets

Of these four areas, "trade secrets" is the only category for which the United States has no formal process by which IP owners can register their rights to the intellectual property in question. For the other three types of intellectual property addressed under United States law, copyrights are registered with the United States Copyright Office (USCO), while both trademarks and patents are handled by the United States Patent and Trademark Office (USPTO).

Trademark Intellectual Property Rights

While inventors must actually request a patent from the USPTO in order to receive protection for the IP rights to their inventions, the technicalities of trademark registration are a bit different. Generally, a trademark owner comes to the USPTO application process with the trademark itself already in-hand, and frequently already in use; in fact, if the mark is not being actively used in interstate commerce at the time the application is filed, the trademark owner will need to submit follow-up documentation within a specified period of time, showing that the mark has entered actual use.

What many people refer to as a "trademark application" is technically an application for federal registration of the mark through the USPTO. While such registration can offer numerous advantages, in most cases the trademark owner has some common-law rights to their IP even before they submit their application – even if stronger legal protections for those intellectual property rights are a major impetus behind seeking USPTO approval.

What Is a Pending Trademark?

A "pending trademark" is one that has been submitted to the USPTO for registration, but which has not yet received final approval. Federal registration for a pending trademark may still be denied, but often a trademark owner's common-law intellectual property rights may be enforceable while the application to register the trademark is still making its way through the USPTO examination process. In addition, a pending trademark can also offer a couple of other advantages of which trademark registration applicants should be aware:

1. Inclusion in the USPTO's Trademark Search system
2. Establishing a "priority of use" date

Pending Trademark Search

Trademark owners who have already submitted applications to register their marks will be aware of the importance of comprehensive trademark search. The reason for the USPTO's emphasis on this importance – repeated many times across the agency's informational materials on trademark registrations – is that a major factor in determining a trademark's eligibility for federal registration will be its distinctiveness: Applications for trademark registration are regularly refused on the basis of the "likelihood of confusion" between the new mark and an already known mark.

Crucially, a mark need not have been approved for federal registration to appear in the database; the USPTO adds marks newly submitted for registration to the database as part of the initial processing of applications. What this inclusion means for owners of pending trademarks is that other potential applicants conducting their own searches of the USPTO trademark retrieval system will be able to see the mark, along with its status, and be deterred from attempting to register closely similar marks themselves.

Can You Enforce a Pending Trademark?

While the full legal protections of federal trademark registration will not be available until (and unless) the USPTO approves the registration, some of the intellectual property rights secured by registration may be retroactively enforceable from the date the application is filed, rather than from the date registration is approved. One of the significant advantages of USPTO trademark registration is that a successful application comes with a "right of priority" presumption. In the United States, trademark IP rights are typically adjudicated on the basis of first use – meaning the party who can be shown to have used the mark in commerce first will be considered the party to have the right to exclusive use of the mark in case of a trademark infringement dispute.

Importantly, Section 7(c) of the Lanham Act (15 U.S.C. § 1057) specifies first "constructive" use. The statute further clarifies for federally registered trademarks, the date of first "constructive use" will be the filing date for the USPTO trademark application, rather than the date on which the registration was approved and even if the filing basis for the application is intent-to-use, rather than use-in-commerce. Dating right of priority from the application filing date means that there can be significant advantages to a pending trademark.

Consult With an Experienced Trademark Attorney

Many trademark owners who are impatiently awaiting the USPTO's decision on their trademark application may have questions about how to protect their intellectual property rights during a pending trademark. Trademark law can be complex, as can understanding the rights afforded at various stages of the federal registration process. However, you do not have to navigate the process alone. Consider reaching out to the experienced intellectual property team at Sullivan & Carter, LLP to schedule a consultation to discuss your pending trademark concerns and how intellectual property rights during a pending trademark can help to protect your brand. Call our office at (929) 724-7529 today.