The Dobrusin Law Firm is recognized as one of the pre-eminent Intellectual Property law Firms in Michigan. Our clients include international and national corporations doing business in the United States, as well as small and mid-sized privately held businesses.
Trademark law is one of our significant areas of practice. We invite you to learn more about domestic and international trademarks and why it is so important to protect your brands, products, and intellectual ideas through trademark registration.
What is Use v. ITU Trademark Application?
There are two “types” of trademark filings: Use or Intent to Use (ITU). The term “use” refers to “use in commerce” and is an important factor when determining how or when to file.
The actual definition of “use in commerce” can be a bit tricky. Your attorney will review your use and help you determine whether or not it meets the “use in commerce” requirement. If your current trademark use meets these requirements then you would proceed with a use application, which can be little less time consuming than an ITU application.
In the case where you don’t meet “use in commerce” requirements but you still want to get your trademark on the books you can file an ITU application. This stands for “intent to use” and is usually a good way to get your mark on file prior to actually using the mark “in commerce.”
Filing an ITU application also lets you protect your brand (like the use application) but it allows you to start the process a little earlier. Moreover, filing an ITU means your trademark will have an earlier filing date, which may be important in the event of infringement violations. In order to receive an actual registration certificate, you will have to show “use in commerce.”
When is your mark protected legally?
Your trademark is technically protected at “common law” when you begin using it in commerce. These are automatic protections but they are highly limited. “Common law” rights protect your mark but only in the geographic area where you are using the mark.
While these “common law” rights can afford you some protection, the safest option is to pursue a federal registration. The moment you file a federal registration, it holds your place in line for that trademark. Once the certificate of registration is issued, the basis for protection is significantly expanded.
How long does a registered trademark last?
A trademark may have no fixed expiration date, as long as the holder submits registration maintenance (renewal) documents. The first renewal is due between the 5th and 6th year after registration. The second renewal is due between the 9th and 10th year after registration and then every 10 years thereafter. As long as these renewals are filed, your trademark will remain active.
What if you discover someone else using your registered trademark?
This is where IP due diligence becomes important.
First, determine whether it really is intentional infringement and whether you are actually being harmed by it. The Yellow Pages are full of businesses beginning with “AAA,” and each may be trademarked. But it doesn’t mean each one is deliberately trying to cash in on the trademark. If there is no fraudulent intent to infringe and there is no harm caused, there may be no reason to file an infringement suit. This is where due diligence becomes important. Our Firm can provide the research and help you determine whether the infringement is worth the cost of pursuing through the courts.
Second, don’t try to handle the matter yourself. If you determine that your financial interests truly are being infringed upon, take action by calling a law Firm that focuses primarily on IP law and infringement. This is a highly specialized area of law and not for an attorney who handles IP cases on the side. Understanding how the courts have ruled in very similar cases is critical to a successful outcome.
Third, work closely with your law firm. Be timely in supplying required documents. Be honest and complete in depositions, and let your lawyer(s) use their experience to help you protect your rights and financial interests.