When considering a mark to use, after completing the searches, “implement” is the next step in the branding strategy. It is accomplished by acquiring rights in one or more marks. To obtain a registered trademark, the applicant must provide a description of the mark and the types of products and services in association with which its use is to be protected. These, plus actual use of the mark in commerce, entitle the applicant to federal registration of the trademark. Upon receipt of an application for trademark registration, a trademark examining attorney at the US patent and trademark office determines registrability of the mark. Filing an intent-to-use application has the advantage of establishing a constructive date of first use of the mark as a filing date of the application. In disputes between parties about rights in a mark, the party with the earliest date use generally prevails. Having your filing date considered as your date of first use could mean the difference between establishing rights in the mark or losing them to another party. Given the stakes it is advisable to file intent to use applications for all candidate marks as soon as they’re being seriously considered for use with a key product. Applications to obtain trademark registration for marks which will not be placed into use can then be abandoned, and all those which will be used in interstate commerce can be prosecuted for registration.
It is also possible to acquire rights in a mark by purchasing another’s rights through assignment or license. Business considerations and the willingness of the potential assignor to cooperate determine the possible courses of action.
A registration may be obtained as much as two years in advance of actually use by filing of an-intent-to-use application. However, it is ultimately the exposure the mark to the consuming public that determines the strength and scope of the asset.
In summary, unlike patents, the trademark application process is generally not burdened by the complexity of its subject matter, so it is an easier task to obtain protection of a trademark once it has been conceived. Thus the process of obtaining trademark protection is easily derived from a branding strategy. However, like patents, it is necessary to police the market throughout the life of the trademark to maintain protection. The danger is a loss of control over the uses of the mark. In the worst case, the mark may lose its specific association with the firm and become generic. More likely other companies may adopt the mark in a manner that dilutes or tarnishes its meaning. Therefore, trademark protection involves both establishment of rights through use and registration, and regular monitoring of competitors and the public at large after the assets have been established.