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Rights under a Pending U.S. Trademark Application

The U.S. trademark registration process does not happen overnight. From application to potential registration, the process can take nine months to a year depending on how quickly the U.S. Patent and Trademark Office reviews the application and whether the office requires any changes to be made. So, what does that mean for pending trademarks? Can they be used while waiting to be registered?

Limited Rights

The rights of an owner of a pending U.S. trademark application are limited compared to owners of a U.S. registered trademark. An applicant cannot effectively “police” their trademark based on their pending U.S. trademark application. Those rights are not granted until the trademark has been registered. Prior to registration, the only legally enforceable rights that may exist in a mark would be common law rights, which are state-based trademark rights. A trademark owner may be able to allege trademark infringement under common law rights where they have continuously used a mark in commerce prior to other infringing marks.

Priority Date

The biggest protection that a pending U.S. trademark application gives its owner doesn’t activate until the mark is actually registered. Once a mark registers, the owner of the mark can prevent third parties from using confusingly similar marks in the marketplace. The priority rights in the mark will be retroactive to the filing date. So, if you file your application on February 1, and it registers later that year on December 1, your priority rights as of December 1 will extend back to February 1. Even though these rights don’t vest until the mark is registered, the priority rights exist back to the date of application.

Use During the Application Period

So, can you use your trademark while the application is pending registration? The answer is yes. Further, in order to obtain a U.S. trademark registration you must first use the mark in interstate commerce within the U.S.

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