QUESTION
Can I trademark a name in an international class even if Im not ready to use it still?
Asked on Oct 19th, 2013 on General Practice - Florida
More details to this question:
Can I trademark a name in the international all class 003 even if I'm going to be gradually using the good of products? Right now I have the name trademarked for hair extensions but i want it for all makeup ( lipstick, eyeshadow,blush etc) and hair categories (shampoo, masks, balms etc) but I wish to use the name in this other categories but in the course of 5 years for example. Can I do it? Im worried because of this warning that the USPTO clearly marks in red "WARNING: Registration Subject to Cancellation for Fraudulent Statements You must ensure that statements made in filings to the USPTO are accurate, as inaccuracies may result in the cancellation of a trademark registration. The lack of a bona intention to use the mark with all goods and/or services included in an application, or the lack of use on all goods and/or services for which you claim use, could jeopardize the validity of the registration and result in its cancellation."
1 ANSWER
Business & Commercial Law Attorney serving Tampa, FL
Partner at
AEGIS LAW, Formerly the Walk Law Firm
2 Awards
In general, you need a current intention to use the mark in commerce within a year. The US Patent and Trademark office only covers marks for use in the United States. International trademarks are filed in each applicable country pursuant to the laws of that country.
A trademark is a registration of a mark, letter name, design, logo for use in commerce in the near term. It is not a placeholder for the long-term future idea to come. If you have a current use or are actively developing it and expect to be in the market within the year, you can file the mark now. I often tell clients to hold off, however, if you are uncertain about the design, the words, or the mark is still changing because there is a significant amount of research, time and money spent registering a mark and most start up businesses cannot afford to spend the time and money on a number of marks before they are ready to commercialize products.
Answered on Oct 20th, 2013 at 4:54 PM
The answer provided is based upon limited information and, as a result, may not be correct or complete. It is not legal advice on which you can rely.