As a college athlete in this name, image and likeness era, it is likely that you may have been told to consider obtaining a federal trademark. Perhaps you have a started a clothing company in which you would like to protect your brand name. Perhaps you have started a podcast and you would like to protect the name of the podcast. Obtaining federal trademark protection is a great way to protect any brand or business you create as a college athlete. The question becomes, how does one obtain federal trademark protection?
To obtain federal trademark protection, one must file a trademark application with the United States Patent and Trademark Office(USPTO). The USPTO has a few different types of trademark applications. Here, we are going discuss the two types of trademark applications that will likely be the most applicable to you as a college athlete. Those two types of trademark applications are the "use" application and the "intent-to-use" application.
"Use" Application v "Intent-to-Use" Application
To be granted federal trademark protection from the USPTO, the proposed trademark must meet the "use interstate commerce" requirement. What does this mean? This means that the proposed trademark must actually be used in the ordinary course of business in commerce in at least two states. If this requirement is met, the applicant can file a "use" application. The application must include a "specimen of use," which is proof that the mark is being is used. If there are no other issues with the application, the proposed trademark is likely to be granted federal trademark protection.
However, if you have a business or brand name that you have fallen in love with but have not started using you may consider filing an "intent-to-use" application. An "intent-to-use" application can be filed for proposed trademarks that you are not currently using, but that you have a good faith intention to use in the future. The benefit of filing an "intent-to-use" application is that it operates as a sort of place holder for your proposed trademark. Filing an "intent-to-use" application puts others on notice that you intend to use that proposed trademark and may bar any subsequent applications for the same mark for the same or related goods or services.
Some college athletes have already taken advantage of the "intent-to-use" trademark application. For example, UCONN women's basketball standout, Paige Bueckers, filed an "intent-to-use" application for the mark "Paige Buckets."
From the filing, it appears that Paige Bueckers plans to use the proposed mark for apparel. It is important to note that Bueckers does not have an indefinite amount of time to begin using the mark in interstate commerce. Bueckers must demonstrate actual use of the mark in interstate commerce within six months after she receives a notice of allowance. Bueckers would also have the option of filing for an extension to demonstrate actual use. If Bueckers do not meet these requirements, her application will be abandoned.
This article is intended to be informational and is not legal advice. For legal advice consult a licensed attorney in your jurisdiction. This article does not establish an attorney-client relationship.
If you are a college athletes interested in filing a federal trademark application, contact my office today. For more on college athletes' name, image, and likeness rights follow me on Twitter @esquire_coach and on Instagram @the_esquirecoach. To receive updates from The Esquire Coach Blog directly to your email please subscribe below.