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Strategies to Consider While Your Trademark Application is Pending

You file a trademark application. How can you make the most out of your filing, before the U.S. Patent and Trademark Office issues your registration?

I get this question from time to time.

Unfortunately, it’s not like patent law, where an applicant can flex some legal muscle with competitors by saying “patent pending.”

There is no “trademark registration pending” status, at least not one that will get you any mileage with would-be copycats. Indeed, telling competitors you have applied for a trademark registration can work against you. Doing so could alert them that they have the opportunity to object to your registration. Once an application clears the examination hurdle (where a PTO examining attorney analyzes the application against a number of statutory bars to registration), the mark is published for opposition, which gives all-comers who believe they would be injured by your registration 30 days to start an opposition proceeding with the U.S. Trademark Trial and Appeal Board by filing a notice of opposition. Why bring this opportunity to their attention? Unless your competitors have paid a vendor to watch new trademark filings — or are checking the PTO’s database themselves — they probably won’t know that you have filed an application, cleared the examination hurdle, and only need to overcome the opposition hurdle before getting your registration.

The most you can (and should) do is use the “TM” symbol when you use your mark. Doing so tells competitors that you claim the words preceding the symbol as your own and that they should steer clear of your mark when adopting a competing mark. It doesn’t have the bite that a “Circle-R” symbol has, but it conveys the same deterring message that competitors will be asking for trouble if they don’t stay away from your mark when marketing competing goods and services.

Posted on October 11, 2011 by Registered CommenterMichael Atkins in | CommentsPost a Comment

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