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The Zest

The Trademark Questions a Retail Buyer May Ask Before the First Order, and How to Have the Answers Ready

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A buyer who is about to put your product on a shelf wants to know one thing about your name: that it won't become their problem. The questions that follow are predictable, so get the answers ready before the meeting. If you can say "registered" or "application filed, serial number such and such," owned by the company, in the right classes, cleared by a search, you've handled the whole conversation in one breath.

Here are the questions as they tend to come up, and what a solid answer looks like for each. I'm not going to tell you what any particular retailer requires, because that changes store to store and I'd be guessing. These are the questions themselves.

"Is the name trademarked?"

This is the one everybody expects, and the honest answer is usually one of three. "Registered" means the USPTO has issued a registration and you can use the ® symbol. "Pending" means an application is on file and you use TM. "No" means you're relying on whatever rights come from using the name, which is the answer that makes a buyer nervous.

Pending is a perfectly good answer if you can back it up. Have the serial number ready. Anyone can check it: the USPTO's status system, TSDR, lets you "enter your application serial number or registration number" and see where it stands. The USPTO itself recommends "checking the status at least every three to four months" while an application is pending, so do that before the meeting and know what the record says. The article on TM versus ® covers which symbol you're allowed to use, and the article on how long it takes explains the stages, so you can tell a buyer roughly where you are in the line.

What you don't want is to be asked and then go looking. "Application filed, serial number 99 something, published for opposition last month" is the answer of a brand that's ready for a purchase order.

"Who owns it?"

Buyers who ask this are checking that the company they're contracting with is the company that owns the brand. The answer should be your operating company, the LLC or corporation on the purchase order, not you personally and not a manufacturer.

That's also what the USPTO cares about. An application has to be filed by the owner of the mark. The USPTO manual says "if the applicant does not own the mark on the application filing date, the application is void," and that filing in the wrong party's name "cannot be cured by amendment or assignment." A founder who filed in her own name and then formed an LLC, or a brand whose contract manufacturer filed the name, has a problem that shows up in exactly this conversation. The article on who should own the trademark walks through the choice. If it's wrong today, fix it before the line sheet goes out, not after.

"Does it cover these products?"

A registration covers the goods listed in it, in the classes it was filed in. A buyer ordering your candles and your room sprays is asking whether both are covered, and the honest answer might be "the candles are, the sprays are filed on intent to use." That's fine. What isn't fine is a registration for apparel being waved at a buyer ordering your new skincare line.

Each class is a separate $350 USPTO fee, so the practical approach is to cover the products on the first purchase order and file intent-to-use for the lines that are coming. The article on going into retail covers how the shelf decides the classes.

"Has anyone searched it?"

Some buyers ask this directly. More of them ask it sideways: "has anyone else ever had a problem with the name?" What they want to know is whether a competitor is going to send a letter the month after your product lands in their stores.

The right answer is a clearance search with a written opinion, done before you filed. Seed is a $650 clearance search with a written opinion, and the opinion is the thing you can point to. A free knockout search on the USPTO's database isn't the same thing, because the conflicts that matter are often in related goods, and an unregistered brand already in stores doesn't show up there at all.

"Is anyone else using it?"

This is the sharp version of the search question, and it's worth understanding why it matters. Your federal filing gives you nationwide priority from your filing date, but the statute carves out anyone who used the name before you filed and hasn't abandoned it. A regional brand that's been selling under a similar name since before your filing date can usually keep going where it already is. If that brand is already on the shelf of the retailer you're pitching, the buyer will know before you do. Better that you know first, which is what the search is for.

"Does the package match?"

Buyers don't ask this one. The USPTO does, and it affects the buyer because it affects whether your application registers. The specimen you file has to show the mark as it's really used on the goods. The USPTO manual says "labels or tags that appear to be a mockup, illustration, or other rendering are unacceptable." The statute counts a mark as used on goods when it's "placed in any manner on the goods or their containers" or "on the tags or labels affixed thereto" and the goods "are sold or transported in commerce." So the retail packaging you're showing the buyer is also your proof of use. Check that the name on it is the version you filed, and photograph the real thing once it's printed.

"Will you stand behind it?"

Expect a question about indemnification somewhere in the vendor paperwork: if your name gets the retailer sued, who pays. I won't give contract advice here, because the terms vary and your business attorney should read them. What I'll say is that every step above makes that promise easier to make. A cleared, filed, correctly owned mark is a promise you can keep. An unsearched name in your own personal name is a promise you're making with your fingers crossed.

Getting the answers ready

Here's the list, in the order I'd work it for a brand with a buyer meeting on the calendar. Confirm who owns the name and fix it if it's wrong. Run the search. File in the company's name, in the classes on the first order, with intent-to-use for the rest. Check TSDR and write down the serial number and status. Put TM on the packaging and keep a photo of the real label. Then walk in.

A brand I'll call Marsh Lantern (invented for this article) did it in that order over about six weeks before a regional grocery pitch. By the meeting, the answer to every question on this page was one sentence. That's the goal.

The trademark attorney cost page shows what each step costs as a flat fee.

Seed is a $650 clearance search with a written opinion. Grove is $2,600: the search, the opinion and the federal application, with procedural Office Actions included. USPTO fees are separate, $350 per class.

Questions about your name? Email us at hello@citrus.legal, or book a paid 30-minute consultation (opens in a new tab) for advice on your specific situation.

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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