Intellectual Property Rights During a Pending Trademark

According to the latest data from the United States Patent and Trademark Office, there were about 400,000 trademark registrations and 325,000 trademark applications during Q3 of 2023. In other words, there are numerous pending trademarks at any given time in the United States. Companies may assume that pending trademarks put them in a state of intellectual property (IP) limbo, but they can experience a certain degree of IP protection during this pending phase. To learn more about intellectual property rights during a pending trademark, consider getting in touch with a Washington, D.C. intellectual property lawyer. Choose War IP LLC to discuss this subject in greater depth, and call (202) 800-3754 to book a consultation.

What Is a Trademark?

A “mark” can take many different forms, including:

  • Symbols
  • Logos
  • Words
  • Phrases
  • Designs.

While these are some of the most common examples, trademarks may also extend to more abstract things, such as sounds, smells, flavors, textures, and the general appearance of a product. 

What Is a Pending Trademark?

When a trademark is pending, it means that the United States Patent and Trademark Office (USPTO) is currently reviewing an application to register that trademark. At some point in the future, the USPTO may approve and register the trademark. On the other hand, the USPTO may still deny the application for trademark registration. Companies can check the status of their trademark applications by visiting the USPTO website. On this website, business owners and entrepreneurs will also find official recommendations and guidelines that assist them to do the following:

  • Check the status of the trademark application every two to three months
  • Ensure that the USPTO receives all necessary documents upon request
  • Use the Trademark Search and Document Retrieval (TSDR) to check status
  • Continue to check the trademark status even after it has been registered

Taking advantage of these trademark registration status monitoring features may be especially beneficial, as they can make it easier to confirm that all paperwork and documentation requests are up to date. Failure to react to USPTO correspondence may result in trademark cancellation, so staying abreast of activity regarding a trademark application and registration status is recommended.

Does a Pending Trademark Protect Intellectual Property?

A pending trademark will be filed in the USPTO’s Trademark Electronic Search System (TESS), which means that any individual or entity conducting due diligence before their own trademark registration application can find that mark’s registration status. Because companies are discouraged from submitting applications to register trademarks that are closely similar to trademarks already registered or pending, this searchability may offer some protection against potential IP infringement. 

What Legal Protection Does the “™” Symbol Provide?

Although companies have the right to use the “™” symbol even without getting trademark registration approval, the ™ symbol itself does not confer substantial, legally enforceable intellectual property rights or protections. This symbol is not the same as the “®” symbol, which indicates a registered trademark. This latter symbol offers significant intellectual property protections, and it highlights the fact the mark may only be used for the registered goods (or similar goods) by the entity that holds the registered trademark. 

Intellectual Property Benefits Associated With Pending Trademarks

Although a pending trademark does not offer the same level of intellectual property protection as a registered trademark, it may offer various other advantages: Some of these include: 

A Pending Trademark Helps Companies “Hold a Spot in Line” With the USPTO

A pending trademark may help a company “hold their spot in line” with the USPTO. A pending trademark generally prevents other companies from registering an identical or similar trademark application. This may allow shrewd companies to act quickly and reserve their right to some of the most in-demand trademarks based on new developments in the world. Celebrities may utter phrases that suddenly become major pop culture moments. Companies – or the celebrities themselves – may then file trademark applications to profit from these moments. Those who act quickly may seize upon new developments in order to beat the competition and secure ownership of lucrative trademarks. 

The Filing Date of a Pending Trademark May Be Important

The date of the trademark application may also prove to be important. Although a pending trademark may not offer as much protection as a registered trademark, simply taking the step to file can secure the earliest application date possible. A company can retroactively enforce a registered trademark from this application date. For example, a drink company might file a trademark for the name “Energy Plus” on January 1st of 2023 – resulting in a pending trademark. A trademark registration application’s pending status does not prevent others from using the mark, so another company could then use the same name for their own energy drink. However, that company may then face retroactive legal action for trademark violations once the other company has registered their trademark later in the year. 

A Pending Trademark Serves as a Warning for Others

A pending trademark also provides other companies with a clear warning that the specific mark has been claimed. This may discourage competitors from using the same trademark, as they will likely be aware of the potential legal ramifications for doing so. New companies can also use the “™” symbol to give their branding a sense of gravitas and legitimacy. Average consumers may not be familiar with the differences between the “™” and “®” symbols, and they may view both with equal levels of trust. In short, pending trademarks help companies build their brands and lay claim to their intellectual property rights. 

Additional Steps To Protect a Pending Trademark

There are a number of additional steps companies can take to enhance the intellectual property benefits of pending trademarks. Some steps a business owner may wish to take include:

Consider Filing Applications in Numerous Countries

Applying for trademarks across numerous countries (generally those in which the company does business) may be beneficial. The World Intellectual Property Organization offers a “Madrid System” that allows companies to register and manage trademarks on a national scale over approximately 130 countries simultaneously. A DC intellectual property lawyer such as War IP Law PLLC may be able to assist with international trademark applications. 

File Applications for Potential Variations of the Mark

Filing applications for numerous variations of the mark may also be a good idea. This recommendation may prove especially valuable in situations where there is concern that other companies may use similar phrases or slogans to the same general effect. 

Conduct a Proper Trademark Search Before Filing

To help ensure positive results prior to a trademark filing, always conduct a proper trademark search through the TESS. This step, the inverse of the protection offered by showing up in searches of TESS records, can help companies avoid filing for trademarks that are already pending.

Stay Up to Date With New Market Trends

If the trademark application relies on new market developments such as trendy catchphrases or innovative technology, remember to stay updated on newer developments. These developments may make your trademark ineffective for the practical branding purposes for which it was originally intended, and you may need to file additional paperwork to modify the application. 

Prioritize the Most Lucrative Trademarks

Although applying for numerous variations of a trademark helps provide greater intellectual property protection for the underlying concept, many companies cannot afford to file endless applications. Therefore, it may make sense to prioritize only the most lucrative and important trademarks. 

Get in Touch With an Intellectual Property Lawyer in Washington, D.C.

Pending trademarks offer numerous advantages and protections that may not be immediately obvious. These benefits may be quite subtle, and it is important for companies to make the most out of their pending trademarks. An experienced Washington, D.C. intellectual property attorney at War IP Law can explain these nuances in more detail. Not only that, but a consultation can also provide more targeted guidance based on the unique circumstances of each company as they seek to protect their intellectual property. To learn more about pending trademarks and their various uses, consider getting in touch with War IP Law PLLC at (202) 800-3754.