I had a client recently reach out about issues with investing in packaging and materials before knowing if the mark for the product itself might be deemed confusingly similar with another mark on the United States Patent and Trademark Office (USPTO) register.
For a variety of reasons, there’s a real advantage to knowing your mark has cleared an Examining Attorney before investing heavily in a brand. And one of the ways to avoid that issue is to file for protection based on the bona fide Intent to Use a mark in commerce. When you file based on Intent to Use, not only is your filing date your priority date (i.e., your constructive first-use date), but the current wait time for the Examining Attorney to review your application is about three months, at which point you should know if the Examining Attorney cites another application or registration against you for likelihood of confusion. If there’s no likelihood of confusion cited, you’ve got a good indication that you can go ahead and make that investment in packaging, materials, marketing, and things like that. Plus, you’ve secured a priority date months ahead of time.
Still, unlike a use-based application where the registration is issued after
A Statement of Use is what you file to demonstrate the use of your mark with the products or services that are listed in your application. You also have to tell the USPTO the date that you first started using the mark in commerce.
So, while a Notice of Allowance happens the end of the prosecution process, the Statement of Use is the last filing needed to secure a registration. The USPTO is going to make sure that the evidence qualifies as showing use in commerce and that the mark in use is substantially identical to what you filed to protect. After review and acceptance of your Statement of Use, the registration will be issued.
Most importantly, your investment in packaging, materials, marketing, etc. to promote and facilitate that use in commerce would be conducted with the knowledge that your mark has already been cleared by the USPTO and is open for investment of resources.
Contact me for more information.