Skip to main content

What is the best way to get trademark first-use rights?

San Jose, CA |

If my company is not yet operating or in commerce yet, how can I "mark my territory?" Would I need to have some documented emails or something with the company name being mentioned? Would I need to have some kind of logo? Is registering the company enough?

This is all assuming I haven't registered with the USPTO.

*Edit* I meant assuming I don't register with the USPTO.

Attorney Answers 5

  1. The "intent to use" mark registration is probably what you are seeking. The site at has a very good explanation of intent to use marks.

    The above is general legal and business analysis. It is not "legal advise" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also terms and conditions item 9, incorporated as if it was reprinted here.

  2. If your company is not yet operating or in commerce yet you don't have any territory to mark. While you can file under an "Intent to Use" basis you then have to re-file relatively quickly under the regualr "mark used in commerce" basis. To establish your mark, you don't have to file at all (though it is of course advisable), you just have to start using it in commerce. So yes, register your company name, get a website and domain name, and start putting out goods or services. You should also get some literature on trademark etc to get familiar with the law in this field. Finally, when starting a business put aside a few dollars to sit down with a local IP attorney that can help you navigate through these issues. The name you choose, the logo you decide may not be protectable for a number of reasons. Getting it done properly the first time around will save you money in the long run.

    The answers given are informational only and do not constitute legal advice. Please feel free to contact me if you want to obtain legal advice from me.

  3. While I cannot give you legal advice in this forum, your best protection would be to file an intent to use application with the USPTO. Your question implies that you do not want to do so. I am not sure why.


  4. Trademark rights arise from use in commerce. You have no trademark rights yet because your company is not yet using its name or logo in commerce. The only option that you have at this point is to file an "intent to use" application for trademark protection with the USPTO. You should consult with intellectual property counsel on these matters---this is not a do it yourself area of the law and failure to retain and consult with counsel will probably cause you major headaches in the future.

  5. I agree with Mr. Slominski and the other attorneys here who stated you should file an intent-to-use trademark application with the United States Trademark Office. The contributor who stated that you have to refile when you use the mark is not correct. When you make use of your trademark by offering the goods or services for sale to your customers in an arms length transaction, you submit an amendment to the application called an Amendment to Allege Use (or a Statement of Use if it is filed after the publication period). Although you state the dates of actual use in your amendment, you get the benefit of your initial filing date in terms of asserting your rights against third parties, so long as your application actually issues to a registration.

    Not all selected trademarks are entitled to protection or registration. Generic terms are free for all to use. Descriptive terms must acquire distinctiveness or trademark significance by use and advertising. Marks that are confusingly similar to registered or applied for marks will also be rejected. There are numerous other grounds for rejecting proposed trademarks.

    I recommend you hire an experienced trademark attorney and pay the small fee to handle your trademark selection and registration the right way the first time. Clearance and an application should not cost you more than $1500 or so including the government filing fee. Subsequent correspondence with the Trademark Office might be needed adding to the costs depending on the situation.

    I wish you the best of luck with your business endeavors.
    Angela Small Booth - practicing trademark law in California for 25 years.

    Comments provided on this website are not intended as legal advise and do not create and attorney client relationship.