No use of trademark before filing application: What are your options?

Do-It-Yourself Trademark Filings

There are several DIY and semi-DIY trademark services offering to help applicants file their trademark applications with the USPTO. In many cases, we see errors jeopardizing the validity of the registration. These mistakes become fatal if not timely corrected. The result is the sacrifice of the validity of the registration in exchange for cost savings. While re-filing a new trademark application is an option, it would forfeit the earlier filing date of the original filing, incur greater costs and prolong the entire application process.

One of the most common mistakes we encounter relates to the alleged use of the mark prior to filing a use-based application. We see similar mistakes made in prematurely filing a Statement of Use in an Intent-To-Use application.

No use of trademark prior to filing use-based application

A trademark application claiming actual use of the mark in commerce is based on Section 1(a) of the Trademark Act, and is often called a Section 1(a) application. In a use-based application, the applicant is declaring that they have made use of the mark on all the goods and services identified under their Section 1(a) filing basis. What would be the consequence if the applicant, in fact, did not use the mark on certain goods or services prior to filing the use-based application? The result is that the mark would be considered void ab initio mark, or void from the beginning.

No use of trademark prior to Statement of Use in ITU application

The same result would occur in the case of prematurely filing a Statement of Use in an ITU application. If the applicant had not used the mark as of the filing date of the Statement of Use, then the mark would be void ab initio. Note that a Statement of Use cannot be withdrawn [TMEP 1109.17], but an Amendment to Allege Use can be withdrawn before approval of the mark for publication [TMEP 1104.11].

What is a void ab initio mark?

Void ab initio is a fancy term to describe a trademark that is void from the beginning. A trademark can be void from the get-go due to failure to use the mark prior to filing a declaration of use in the following two scenarios:

a) filing a use-based application; or

b) filing a Statement of Use in an Intent-To-Use application.

A mark is not void simply because the applicant identifies too early of a date of first use (e.g., applicant claims first use date of January 2017 when in fact the first use date was March 2017). Instead, void ab initio refers to the specific situation where the applicant failed to use the mark as of filing date of a use-based application or the filing date of a Statement of Use.

What if the applicant identifies a date of first use earlier than the actual first use date?

Identifying a much earlier date than the actual first use date is not necessarily fatal as long as the applicant had sufficient use in commerce as of the filing date of the trademark application or Statement of Use.

Is void ab initio the same as fraud?

No, fraud is an incredibly difficult claim to prove at the TTAB. Proving a void mark is much more feasible since the intent of the applicant is irrelevant. Proving a void mark will not necessarily be easy since it can be quite challenging to prove a negative.

Furthermore, a claim of void ab initio may apply against an applicant who was mistaken as to the correct filing basis for their trademark application. In other words, ignorance of the law is not an excuse to defend against a void ab initio claim

How to prove nonuse of mark

Trademark filings can be challenged by filing an opposition for a pending application or a cancellation for a registration. In either case, the plaintiff may seek information on the trademark owner’s alleged use by propounding discovery requests. The lack of meaningful responses to those discovery requests can become a key piece of evidence in proving lack of use as of a certain date.

Dealing with a trademark nonuse issue?

Contact experienced patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you resolve your trademark nonuse matter.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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