FAQ: I am launching my business soon. I know what I’ll be selling. Do I have to wait until I actually start selling goods and/or services to file a trademark application? The answer: nope!
On February 25th, 2019- rapper Cardi B filed trademark applications to secure for “OKURR,” “OKURRR,” “BOCKTAIL,” “BARDI,” “BOLLECTION” and “WASHPOPPIN.” These applications were filed to be used in connection with various goods and services, including clothing, cosmetics, printed matter, musical recordings, entertainment services, alcoholic beverages and retail stores.
Under Section 1(a) of the Trademark Act, a trademark may only be successfully registered if the applicants proves current use of trademark in interstate commerce. In other words, you must be selling goods and services across state lines. In order to prove this, applicants must submit specimens that show conclusive proof to the United States Patent and Trademark Office (USPTO) that they are indeed using the trademark in connection with the goods and services listed in the application.
As it pertains to the Cardi B, it seems as if they were not yet able to prove that they were currently using the trademarks in connection with the listed goods and services, and therefore, they could not file under Section 1 (a) of the Trademark Act.
If an applicant is unable to prove “use in commerce” when filing, they can opt to submit what is called an “intent-to-use” application under Section 1(b) of the Trademark Act.This would tell the United States Patent and Trademark Office (USPTO) that the applicant has a bonafide intention to use the trademark in commerce in the near future. Furthermore, the filing of such an application allows the applicant to reserve rights to the trademark, before they even use it since they will obtain a priority date that precedes the date of actual use in interstate commerce.
Here’s the lesson: while you will need to prove that that you are selling goods and/ or services to achieve REGISTRATION, you do not have to be selling goods and/services to file a trademark APPLICATION.