Am I required to use my trademark (sell items with the trademark) before I apply for a federal trademark registration?

The short answer is no.

You can apply for a federal trademark registration even if you have not used a product. Prior to Nov. 16, 1989 a trademark application could not be submitted without proof that the trademark had already been “used in commerce.” This resulted in large companies shipping small quantities of products with a trademark they were considering for future use, so that they could go through the trademark registration process (usually one year or more) prior to a full launch of a product.

Then congress enacted the Trademark Law Revision Act of 1988 (effective Nov. 16, 1989) which allows a different kind of application called an “intent-to-use” application. For this application you only need to sign a statement or oath that you intend to use the trademark that you are applying for. If the application is approved you are given 6 months to show proof that you are now using the trademark in commerce. Extensions of time may be available (up to 36 months) if you qualify, but a federally registered trademark is not issued until you submit proof of use in commerce. There are additional costs to the intent-to-use application, but it allows a company to find out if a trademark will be approved before spending significant costs on branding and packaging.


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