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[4lane]

Hi All - I had a search performed on a wholesale company name which came through clear. I now have final product samples produced with the company name labeling on the product, a company website at the company name's url, and corporate materials (letterhead, business cards, etc.) produced and complete.

We are now getting wholesale orders, which will be sold on retail shelves starting on 2/1/11. I am applying to trademark the company name, but am unsure whether I should apply as:

1. "Section 1(a) Use-in-Commerce" under the Principle Registrar seeing as sales are in the near future.
2. "Section 1(b) Intent-to-Sell" under the Principle Registrar

At the time of submitting the trademark request, the product won't be on store shelves yet, but it may be by the time they review the request. I'd rather apply as 1(a) so I don't have to resubmit later, but is that a risk I shouldn't take?

[TheTrademarkCompany]

The TMEP provides guidance on this point.  Specifically Section 903.02 states "The date of first use in commerce is the date when the goods were first sold or transported, or the services were first rendered, under the mark in a type of commerce that may be lawfully regulated by Congress, if such use is bona fide and in the ordinary course of trade."

Under what we know from your scenario your mark may not be in use until you ship and/or sell them for stores to have on the shelf in 2011.  As such, a 1(b) application may be more appropriate amending the same to a 1(a) when use begins either via an Amendment to Allege Use or Statement of Use as appropriate.

Hope this helps. 

/Matthew H. Swyers/
www.TheTrademarkCompany.com

[TheTrademarkCompany]

Forgot a link to the TMEP - Sorry:

http://tess2.uspto.gov/tmdb/tmep/0900.htm#_T90104

/Matt/

[4lane]

This is great thank you. I better understand, now, what constitutes first use in commerce. But, does this first use need to occur prior to submitting a 1(a) application? Or can I submit a 1(a) because, although use in commerce is not yet achieved, it will by the time the 1(a) application is reviewed. Would you still go the 1(b) route in this case?

[TheTrademarkCompany]

You're welcome.  In order to submit a 1(a) application the mark must already be in use or placed into use on the day the 1(a) application is applied for.  Otherwise 1(b) is the appropriate route.

/Matthew Swyers/
www.TheTrademarkCompany.com

[Yak]

4lane,
As part of the trademark registration application, you will be declaring "as of the time you file" that your mark is "currently being used" in interstate commerce. 
if you do not want to take the extra steps, or pay the extra $100 statement of use filing fee, through the 1(b) you can always wait until you sell/ship goods and then file the application. 
If you want to file now, then it does sound like 1(b) is the way to go.

[JSonnabend]

The advice you have received so far is likely correct, but perhaps not.

The use you have described so far almost certainly constitutes "analogous" use.  Analogous use may be sufficient to support claims of seniority over another party claiming rights to the mark.  What the described use may not be is "technical" use, that is, the type of use that supports a trademark registration.  It is this latter use that the prior posters have focused on, and rightfully so.

My thought is that while there's a good chance that the conclusions reached above are correct, it may be that your use to date does qualify as technical use.  To advise you further, you would have to fill in some details.  For starters, I would want to know how you used the samples you mentioned, where the inventory is located, and how you obtained the orders.  Speaking directly with a qualified TM attorney about this would likely be a good idea.

In the end, all of this may be academic.  If the budget is there for the ITU route, you could simply file that way.  You won't have to worry about DOFU issues.

- Jeff

[Yak]

I had not considered that.  I was under the impression that analogous use was used more during opposition of trademarks or cancellation proceedings and helped the competing claimant who is asserting priority on the basis of earlier analogous use of the mark.  So it can be used as a basis for registration also?

[JSonnabend]

No, analogous use cannot be used to support a registration.  I want to be clear on that.

I brought that issue up so the OP had the bigger picture in mind and did not discount his current use entirely.  It may be important later.

For now, to support registration, the OP will have to have technical use.  My point was that he may already have technical use and we shouldn't dismiss such a possibility out of hand, which I think some other posters may have done.

- Jeff

[4lane]

To clarify the situation even further...I have sales samples that are being used to collect orders. These are a couple of final units with final company markings, etc. I do not yet have inventory. However the production order has been placed with the chinese manufacturer. The inventory won't arrive for several months, at which time units will be delivered to retail stores for retail sale.

[JSonnabend]

Are the sales samples branded?  Have they been distributed at all?

- Jeff

[4lane]

Sales samples are branded, with all sales/marketing materiels. The final product just hasn't been received and thus, is not on store shelves yet.

[JSonnabend]

If the sales samples have been sent to prospective retailers in the ordinary course, they should constitute technical use sufficient to support registration.

- Jeff