While the trademark process may seem quite simple, especially in comparison to the patent process, there are quite a number of traps for the unwary or unrepresented applicant to fall into. If made, some of these mistakes are fixable, but unfortunately, some are not and may require starting the application process from the beginning.

In this article, we discuss those mistakes that cannot be fixed and that render the application or registration void. As further discussed below, one of the most common mistakes relates to the allegation of the use of a trademark when filing an application based on current use. 

1. Incorrectly Filing an Application Based on Current Use Where No Bona Fide Use Has Been Made 

When filing a trademark application, an applicant is required to select a basis for filing. The two most common bases are current use (1(a)), where the applicant declares that the mark is being used in commerce as of the application filing date, and intent to use (1(b)), where the applicant declares that at least as early as the application filing date it had a bona fide intention to use the mark in commerce.  

The Trademark Act defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. §1127. Goods will usually be deemed to be “in commerce” if they are shipped over state lines at the mark owner’s instructions or in furtherance of a sale or a potential sale, such as for display at a trade show. However, what qualifies as “bona fide use in the ordinary course of trade” can often be difficult to ascertain. In the United States, a trademark applicant may not generally file a trademark application claiming actual use of the mark if the use was merely pre-sale advertising or promotion of the goods or services. An applicant that incorrectly files an application based on current use assuming that presale developmental activities constitute use, risks the application or registration and the rights thereunder being deemed void ab initio, i.e. void from the start.

It is important to note, however, that use in commerce is dependent on what is considered the ordinary course of trade for the applicant’s industry. For example, pharmaceutical trademarks present special circumstances given the means by which these products are marketed and sold. A pharmaceutical product cannot be sold commercially without approval by the U.S. Food and Drug Administration; however, before the drug is put on the market, it will undergo clinical trials and testing that are considered a part of ordinary business. U.S. courts have indicated that shipping a drug to a clinical investigator for use in clinical trials during the Food and Drug Administration approval process can constitute use sufficient to file a trademark application with the USPTO.

Further, proving the use of trademarks on the Internet can be tricky. As it pertains to the sale of goods, mere advertising or promotion of a trademark on a web page is not “use in commerce.” A website that displays the trademark, the goods, and a means to buy the goods is likely considered to be “used in commerce.” Showing use in commerce on the internet generally requires a means of ordering the goods directly from the website.

Use in commerce as a trademark is a prerequisite to federal registration. Thus, an understanding of what it means to use a mark is imperative to ensuring that trademark rights are properly acquired and maintained. Failure to secure such rights through inadvertence or unfamiliarity with legal requirements can prove devastating, especially if a competitor is able to establish prior and continuing rights.

2. Prematurely Filing an Allegation of Use or an Amendment to Allege Use in an Intent to Use Application. 

An applicant that submits an application on an intent-to-use basis will eventually need to submit proof that the trademark is in use in commerce in relation to the goods and services identified in the application in order to obtain a trademark registration. In alleging use in commerce at this stage of the application process, the same considerations discussed above come into play. An applicant that incorrectly files an allegation of use or an amendment to allege use in an intent to use the application, assuming that presale developmental activities constitute use, risks the application or registration and the rights thereunder being deemed void ab initio, i.e. void from the start.

3. Prematurely Assigning an Intent to Use Application 

Section 10 of the Trademark Act, 15 U.S.C. §1060, prohibits the transfer of ownership of an intent-to-use trademark application to another owner before an acceptable amendment to allege use or an allegation of use is filed unless the transfer is to the successor of the business of the trademark applicant, or to the successor of a portion of the business to which the trademark is associated. 

What this means is that if you filed a trademark application on an intent-to-use basis, any assignment of the rights to that application to a third party will need to be put on hold until proof of use of the mark in commerce is submitted, unless the assignment of the rights is to a successor. If an assignment of an intent to use application is made, other than to a successor, the application or resulting registration is void.

4. Incorrectly Identifying the Owner of the Trademark 

The owner of a trademark must be correctly identified in the application when it is initially submitted. For example, if the co-founder of a company files an application in their name individually when in fact the company is the owner of the mark, the application is void as filed because the applicant (the co-founder) is not the true owner of the mark. As a second example, two individuals co-own a company. One of the co-owners submitted a trademark application in their name solely as the owner of the trademark. The application is void as filed because the applicant (co-owner) is not the sole owner of the mark. The application should have identified both individuals as joint owners. This mistake cannot be fixed by adding the joint owner’s name or through an assignment to the co-owners jointly. The only option is to start over with a new application that identifies both individuals as joint trademark owners.

The 4 above mistakes can go unnoticed until an owner attempts to enforce their mark against a third party. That third party may challenge the validity of the mark, and will likely be successful in having the registration deemed void if one of the four mistakes above are found to exist.