I get many different types of questions from my clients regarding various trademark matters. Some scenarios involve trademarks that have been in their portfolio for a while and are no longer in use, while other trademarks are brand new and ready for their moment in the spotlight. Sometimes clients wonder what to do with a trademark associated with a business they are purchasing, and other times they have a question related to a small but confusing detail associated with a new trademark application.

This post is intended to be a bit of a grab bag, spotlighting four issues I recently considered in the world of trademarks framed in the format of the “something old, something new, something borrowed, something blue” as is traditional for a wedding—as many of us are right in the middle of “wedding season”.

SOMETHING OLD: what do I do about old trademarks that are out of use?

Trademark priority in the United States is based on being first to use, as Collin noted in the blog recently. After you get a trademark registration for your mark, your right to nationwide protection for your mark is only able to be maintained if you continue to use it. At certain intervals, you need to renew your registration to show continued use to keep the registration active. If the trademark has stopped being used, you may be able to renew it still by claiming “acceptable non-use”, but that is a high bar to clear (think natural disaster significantly affecting goods produced under the mark) and in most cases, you will lose trademarks you don’t use.

SOMETHING NEW: what do I do with a new trademark that I applied for while I wait for the USPTO to respond?

By contrast, when thinking about a trademark application that is awaiting USPTO attention, you don’t need to let too much grass grow under your feet. Before you can use the “circle R” symbol associated with the mark once it is registered, you may use the “TM” symbol to indicate use of a mark as a trademark. In fact, you don’t even need to have a trademark application in the hopper to use a “TM”, as that can signify common law use of a mark as a trademark on its own; however, if you have already applied to the USPTO for a trademark, absolutely use the TM until the USPTO hopefully allows you to use the “circle R” in good time. Erin wrote about these symbols on the blog previously as well.

SOMETHING BORROWED: what do I do with trademark registrations associated with a business I am purchasing?

If you are purchasing a business, that business may have trademark registrations associated with it. You will likely want to get those trademarks assigned or even licensed appropriately as part of the transaction—this can include federal trademarks as well as relevant state trademarks. For federal trademarks, you want to work within the USPTO; for any state trademarks, you would work within that state’s trademark systems. Your lawyer can help you with this.

SOMETHING BLUE: should I try to trademark color as part of my logo?

When applying for a trademark for a logo, often the best course of action is to apply for the mark in black and white—which gives more broad protection for the image than just one color scheme. However, sometimes the color itself is distinctive and an applicant may want to trademark the color itself. That is also a high bar to clear, though, and proof needs to be submitted that the color itself is so distinctive as to a specific source that consumers would associate it with that source, having achieved “secondary meaning”. One example is the brown of UPS for parcel delivery trucks and uniforms. This situation does not happen often and is typically not advisable.

Hopefully, this unique blog format provided an insight or two into handling a trademark portfolio, dealing with marks both old and new. And happy wedding season!