As we have previously seen, patent law and trademark law are separate and distinct fields of law. As such, some terms or concepts have very different meanings when it comes to each particular field.
The concept of “using” your trademark or your invention is one area where each of these fields of law has its own very specific requirements. Here are the basics of using your trademark in public versus using your invention in public and the legal benefits and consequences of each when it comes to protecting your rights in the U.S.
Use of a Trademark
As we have seen in previous posts, a trademark is any word or symbol that can be used by the Owner to identify source or origin of Goods or Services. Brand names are examples of trademarks, such as Coca-Cola or Nike. Once an Owner determines its brand name or creates a mark that identifies its Goods or Services that it wants to protect, the Owner may file an application for registration of the mark with the United States Patent & Trademark Office (USPTO).
For a trademark application to be complete, and therefore eligible to be granted registration by the USPTO, the Owner of the mark must be using the mark in commerce to sell its Goods or Services in interstate commerce. Hence, to be eligible for trademark registration on the USPTO’s Principal Register and for protection under the Lanham Act, “use” of a mark must be currently happening and must be ongoing.
What about “use” of an invention when it comes to patent law?
In patent law, public use and disclosure of an invention starts the clock running in the United States. That means that the Inventor has one year from the time that he or she discloses an invention to the public, to file a patent application for the invention with the USPTO. Failure of the Inventor to do this within the one-year period immediately following Inventor’s public disclosure of the invention will result in the Inventor losing his or her right to patent the invention. It should be noted that the law regarding disclosure of inventions may differ in other countries.
Illustrative Example
Let’s say that Owner has a new invention X and has chosen the brand name of XYZ under which to market and sell invention X. Owner filed an Intent-To-Use trademark application with the USPTO for the mark of XYZ for the Class of Goods into which invention X falls, on January 1, 2025.
This will mean that, as long as XYZ otherwise clears the trademark application examination process at the USPTO, Owner will have up to three (3) years from the date of the Notice of Allowance to begin using the mark of XYZ to sell its Goods in interstate commerce and submit proof of this use of the mark to the USPTO to complete its trademark application via a Statement of Use or an Amendment Alleging Use. The mark will not be granted registration on the Principal Register (and thus fully protected under the Lanham Act) until Owner shows that it is using XYZ in commerce as it has originally claimed in the application.
Owner then discloses invention X to possible investors on January 30, 2025. Owner has until January 30, 2026, to file a complete non-provisional patent application with the USPTO. If Owner does not file this application by January 30, 2026, Owner loses his or her right to seek patent protection for invention X.
The Upshot
While it is common for folks to mix up “patents” and “trademarks,” you can see that it is critically important for owners of these items of intellectual property to be very familiar with the “rules of the road” for each.
Disclosing an invention prior to filing a patent application has very real consequences for the Inventor. By contrast, not using a trademark in commerce has very real consequences for the mark Owner, as the Owner is unable to be granted trademark registration without use of the mark in commerce. Therefore, it is crucial that all IP Owners and Inventors educate themselves on the legal ramifications of their business decisions when rolling out new brands or inventions.
Sand, Sebolt & Wernow is an intellectual property law firm. We specialize in patents, trademarks, copyrights, IP (Intellectual Property) litigation licensing, foreign filings, and trade secrets.
Our team of professionals are innovators, just like you, and passionate about protecting your intellectual property. We represent individuals and businesses of all sizes, from Fortune 500 corporations to sole proprietors. It’s our mission to guide you through the process of protecting your assets with the appropriate mix of patents, trademarks, copyrights and trade secrets.
If you’re looking for an experienced IP attorney, contact us.