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First use in commerce versus passage of time

Discussion in 'Copyright, Trademark, Patent Law' started by soundingBoard, May 8, 2021.

  1. soundingBoard

    soundingBoard Law Topic Starter New Member

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    Hi, a day of research has tangled my brain, so I'll try to be clear. Please let me know if more or different background is needed.

    I expect to have patent approval at some point. Patent is for a device. Device has a physical representation, on which the name/logo for which I intend to register a trademark has clear placement. Trying to get the sequence of steps legally compliant.

    My current intent is to license the IP (patent and trademark usage/rights) rather than manufacture and sell individual units. Licensee(s) might tweak the physical representation of device to suit their needs, but would have requirements on how name/logo was to be included. What constitutes first use in commerce? Is it when I sign the first license agreement? When the first licensee sells the first unit? Other?

    How do I avoid the case where I'm showing the prototypes, and they display the name/logo I desire to trademark, but it takes some time till I meet the above "first use in commerce" requirements, and someone who who gets knowledge of the name/logo decides to jump in with their own non-infringing (and clearly inferior ... ha ha) device and sells a unit or ten and files for registration of trademark for that name/logo before I can lock in my first proper use in commerce and submit my application?

    Is this a case for an "intent-to-use" application? Is there a better mechanism or sequence of events to make sure I'm not just handing to some third party a carefully researched & crafted name/logo?

    Thank you!
     
  2. adjusterjack

    adjusterjack Super Moderator

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    You need a patent and trademark attorney right now. Don't be penny wise and dollar foolish.

    Get your patent and register your trademark before you ever show anybody your gadget.

    Then have a lawyer draw up a contract that protects your interests when you show the gadget.

    We get people like you here all the time, asking strangers for advice because they aren't willing to spend the money on professionals.
     
  3. soundingBoard

    soundingBoard Law Topic Starter New Member

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    I'm in process of finding new atty be/c I'm in diff locale than last time I used one. Thought first use in commerce was pre-condition for registering, maybe or maybe not complicated by licensing vs manufacturing. Hoping it's ok for people like me to try to understand the terrain a bit so I'm conversant on terms and concepts as I evaluate the attorney options where I am. Thank you for your time.
     
  4. adjusterjack

    adjusterjack Super Moderator

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    It is but you can apparently file an "intent to use" application and then you have time to actually use the mark in commerce before your registration is completed.

    I don't have time to read all the trademark stuff at the US PTO website but you certainly should.

    Trademark basics
     
  5. flyingron

    flyingron Well-Known Member

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    I'm not understanding how the name or logo (unless the logo conveys the essence of the invention) even has a bearing on the patent. It is neither protected nor relevant to the patent.

    When you say you "expect approval" that you've already filed a non-provisional application?
     
  6. soundingBoard

    soundingBoard Law Topic Starter New Member

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    Yes, I've filed non-provisional. Mentioned that only as background for why licensing IP is one of the possibilities. If no IP (or trade secret, I guess), then licensing is less of an option. Not counting chickens before they're hatched, as the expression goes, but following the hypothetical path where there is IP to license, the question relates to when/how to apply for trademark. Specifically, with regard to first use in commerce, would signing a license agreement (where the trademark and patent IP is licensed) qualify as "first use", or would it be when the licensee first sells it, or other? And does "intent to use" on the trademark application make this less worrisome by giving me up to 36 months (if I recall, and in 6 month increments) to work this through?

    My goal is to ensure, as much as I can, that the device and the trademark are wholly and properly owned/contained/bounded (I don't know best term) for when they are finally licensed or manufactured, so that I don't have to hope that no one else trips over or imagines the trademark that fits the device so well while I wait for the patent application to be evaluated or a license agreement to happen.

    I read the USPTO and other sites as bkg before posting here, and ask here just so I have my thinking as focused as possible when I meet on it with an atty. Have found that being prepared on concepts and terminology makes that go better. Thanks for your thoughts.
     
  7. flyingron

    flyingron Well-Known Member

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    OK, so the patent is irrelevant at this point. The fact that you stated that they were linked by some IP principal was confusing.

    You get trademark rights by using the mark in commerce. That means actually using it for actually making a sale, rather than squatting on it. The intent to use filing allows you to get a bit of priority (provided you do so before a competing mark). Note that the time the intent gets you is SIX months. You can get it extended but you have to show GOOD CAUSE. That you've not found someone else to license it is not GOOD CAUSE.

    Further, it sounds like you don't actually have the intent to use the mark in commerce. You can't squat on the mark just so you can license it to someone else.
     
  8. soundingBoard

    soundingBoard Law Topic Starter New Member

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    Hmmmmm, food for thought. Thank you.
     

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