Use In Commerce Requirement of Trademark Registration for Technology Startups

Trademark registration for technology startups innovating in e-commerce, mobile applications, niche social networks, and enterprise are valued as much as brands in traditional categories. Famous trademarks such as Skype®, Amazon®, and Samsung® arguably carry marketing cache and customer goodwill on par with Starbucks®, Old Spice®, and Walmart®. Trademark registration is essential in almost any vertical, and fast growing tech startups innovating in various sectors of industry are no exception.

Some months after the conception date of a trademark by the founders, after a trademark search and clearance report and filing of a federal application based on intent-to-use section 1(b) filing, and after passing of the publication period with no successful oppositions, the United States Patent and Trademark Office (USPTO) will rule a trademark is “allowed” , and an official Notice of Allowance (NOA) will issue. However, the Notice of Allowance does not mean that the trademark has been registered.

Trademark Registration Process: Use in Commerce after Notice of Allowance (NOA)

Most entrepreneurs of technology startups and CMOs of innovation departments in growth-stage companies innately understand brand protection, and the value of trademarks, logos, slogans or top level domain names in product marketing, market dominance, and company identity.

However, technology startup founders and key executives rarely have a complete grasp of the nuisances of trademark law in the United States, the legal consequences of priority filing, the “use in commerce” requirements, and federal trademark application formalities with USPTO. The use in commerce requirement of federal trademark registration post-NOA is a critical filing, which if overlooked can significantly delay the registration process.

After an NOA is issued, a State of Use (SOU) will be required be a trademark is registered. Under the intent-to-use federal filing basis formalities, the deadline for filing an SOU, or request for extension of time to file an SOU, is calculated from the date the NOA is issued. An SOU is similar to an evidentiary filing showing evidence of “use in commerce” of the mark.  Of course “use in commerce” is a legal term of art that can be debated and analyzed by attorneys and judges in trademark litigation cases, or in front of the Trademark Trial and Appeal Board (TTAB) of the USPTO. This is where a consultation with an experienced trademark attorney can assist technology start founders and entrepreneurs in application filing and market use strategy to strengthen their trademark rights.

Statement of Use Requirement for Trademark Registration of Technology Startups

While most entrepreneurs don’t give much thought arbitrary deadlines set by the USPTO, a trademark attorney experienced with federal trademark applications who is tasked with the responsibility of trademark protection of technology startups must strictly  calendar trademark application filing timelines and notify clients of deadlines to file an SOU or applicable extension request, preventing an application from being abandoned. When analyzing whether a product or service meets the use in commerce standard under the SOU requirements, the USPTO offers the following guidance:

Seal of the U.S. Patent and Trademark Office (USPTO.gov), the federal agency for granting U.S. patents and registering trademarks.

Examples of specimens for goods may include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or point-of-sale displays…webpages may also be acceptable specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.

In this context “specimens” mean evidence and generally includes marketing materials of the product or service, including the product itself in some cases, featuring the applied for trademark, logo, or slogan.

Trademark Registration of Technology Startups: Filing and Statement of Use Strategy

Time is an important element in trademark law. First to file, first to use, and meeting strict deadlines set by the United States Patent and Trademark Office are crucial to successful trademark registration and brand protection.

Technology startups and innovation projects are, categorically speaking, likely to be in some sort of product development phase as their federal trademark application is going through the registration process. Technology startup require special considerations during trademark registration because their product development strategy can be in flux during their brand name registration process. Some tech startups may be 10 weeks into dev strategy of a Saas product (Software as a Service), a mobile application, or a social network, perhaps with some version of a minimum viable product (MPV) built. Other tech startups seeking brand protection through trademark registration may be in the concept or idea phase only, and others may be post-roll out.

Because “use in commerce” can be interpreted in many ways, based on the nature of the innovation, the distribution platform, and other legal and marketing considerations which can impact priority rights, registration dates and filings, and ultimately legal protection of the brand, informed consultation by an experienced trademark who understands emerging technology markets, entrepreneurs and founders can assist tech entrepreneurs to develop precise brand portfolio protection strategies, go to marketing strategies, and USPTO filing tactics that allow maximum control and protection of a trademark, logo or company name.

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