At the heart of trademark law lies the crucial concept of utilization. The act of using your mark—be it your business name, logo, or tagline—in commerce is what fundamentally establishes your trademark rights, even before formal registration. However, while registration is pivotal, it serves to significantly bolster and amplify those rights.

When pursuing trademark registration through the United States Patent and Trademark Office (USPTO), demonstrating prior use of the trademark in interstate commerce is imperative. Alternatively, there exists an Intent to Use option for those who anticipate employing the mark within 36 months.

Establishing “prior use of the trademark” necessitates active utilization of the mark within the ordinary course of business at the time of filing. The manner of establishing this usage varies based on whether goods or services are involved. For goods, the mark must be visibly present on the product, its packaging, containers, or associated displays, with the goods actually available for sale. For services, the mark must be incorporated into the advertising or sale of the service, which must be genuinely offered. Additionally, the mark(s) must be employed in interstate commerce, typically evidenced through a functional website showcasing the goods and services.

Yet, the obligation to protect your trademark doesn’t cease upon registration. Once granted, the mark must be utilized precisely as registered for all listed goods/services, failing which, protection may be compromised.

Consider a scenario where your registered trademark covers class 25 (pertaining to clothing items such as t-shirts, shorts, hats, and caps) for both a word mark and a logo mark. If post-registration, you solely use the word mark on hats and caps, neglecting the other listed goods, and completely forego using the logo, you risk exposing your registered trademark to potential cancellation challenges due to non-conforming use.

The USPTO, recognizing the need to fortify the integrity of the Trademark Registry, has instituted various initiatives, including an expedited cancellation process, recently enacted into law through the Trademark Modernization Act (TMA). This legislation facilitates new grounds for cancellation, allowing challenges to marks that have never been utilized in commerce on or in connection with the designated goods and services, albeit within a specified timeframe.

In light of these evolving trademark regulations, it is imperative for you and your business to cultivate a comprehensive Intellectual Property (IP) protection strategy encompassing both registration and maintenance. Ser & Associates specializes in guiding businesses and entrepreneurs through trademark registration and maintenance processes. Should you require assistance safeguarding your business’s name, logo, and brand, please don’t hesitate to contact us at 305.222.7282 or

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