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Going Into Retail Stores? What to Do About Your Trademark Before the First Purchase Order

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Before the line sheet goes out and before you accept the first purchase order, have the name searched and a federal application on file in your company's name, covering the products that will actually sit on the shelf. At Citrus Legal that's Grove, $2,600 flat for the search, the written opinion and the application, plus $350 per class to the USPTO. Retail is the moment your name stops being a listing you control and becomes a product strangers can pick up and copy.

Here's what changes when you go into stores, and what I'd do about each piece.

Retail makes the name public in a way your website didn't

A buyer meeting, a trade show booth, a line sheet forwarded around a merchandising team: all of that shows your name to people who are in the business of finding products. Most of them are honest. The problem is that the ones who aren't can file before you do.

Filing first is the fix, and it works even before the goods are in stores. Under 15 U.S.C. 1057(c), filing the application "shall constitute constructive use of the mark," and once the registration issues it gives you nationwide priority from your filing date against anyone who hasn't already used or filed. The application can be filed on intent to use, so it doesn't wait for the first shipment. The article on filing before launch covers the timeline after filing, including the six months you get after the Notice of Allowance to show use, with six-month extensions at $125 per class.

The shelf decides the classes

Online, a brand can sell a little of everything from one page. On a shelf, each product is its own line, and the USPTO sorts goods into classes by what they are. The base application fee is $350 per class, so the question is which lines are real.

I'd file the products on the first purchase order, and the ones you're confident will follow within the next year or two. Intent-to-use covers the second group. What I wouldn't do is file every category you might someday sell, because an application has to be backed by real use before it registers, and classes you never ship into are money spent for nothing. The article on what a class is explains how the lines fall, and the goods description has to be written so a store product matches it later. One more fee to know about: if the description is written in your own words instead of picked from the USPTO's ID Manual, the USPTO adds $200 per class.

Clear the name against the whole aisle, not just your category

A retail buyer puts you next to your competitors, which is also how the USPTO looks at conflicts. Its manual says the goods "do not have to be identical or even competitive to find a likelihood of confusion," they "need only be related in some manner." A snack brand and a beverage brand with similar names can collide. And when the other registration doesn't limit its trade channels, the USPTO presumes the goods "move in all normal channels of trade" and "are available to all classes of purchasers." So "they're only in specialty stores and we're only in grocery" isn't an answer that works.

That's what Seed is for. Seed is a $650 clearance search with a written opinion, and at this stage it's the step that tells you whether to put the name on a pallet. The article on how different a name has to be walks through what "related" means.

Your packaging is your specimen, so design it to count

To get from application to registration you'll file a specimen that shows the name in real use on the goods. The statute counts a mark as used on goods when it's "placed in any manner on the goods or their containers or the displays associated therewith, or on the tags or labels affixed thereto," and the goods "are sold or transported in commerce." Retail packaging is nearly perfect for this, with one catch: it has to be real. The USPTO manual says "labels or tags that appear to be a mockup, illustration, or other rendering are unacceptable." A designer's render won't be accepted. A photo of the finished label on the finished product will, and the manual notes that a label showing the ordinary retail information, like net weight, a UPC code or an ingredient list, reads as a real label even when it's not photographed on the goods.

So before you approve the packaging run, check that the name on the package is the version you filed. If you filed the word mark, any styling works. If you filed a logo and the retail artwork is different, we have a mismatch to fix before printing. The clothing specimen article covers hang tags and labels in detail, and the same logic applies to a jar, a box or a bottle.

What a buyer sees on the package

Until the registration issues, use TM next to the name. The ® symbol is for registered marks only, and using it early is a problem you don't want a buyer to catch. The article on TM versus ® explains the difference. If the retailer asks whether the name is protected, "application filed, serial number such and such" is a clear, honest answer, and it's a much better one than "we've been meaning to."

If a store already carries a similar name

Sometimes the search turns up a brand already on a shelf under a close name, with no registration. That matters because the nationwide priority a filing gives you doesn't apply against someone who used the name before your filing date and hasn't abandoned it. The statute carves them out. A prior local user can usually keep going where they already are, even after you register. The article on prior user rights explains what that leaves you with. In some cases it's a reason to adjust the name before the first order, not after.

The reverse can happen too. Once you're in stores, a copycat has a product to copy. Registration gives you the tools to deal with that, and the monitoring page explains how we watch for new filings that come too close.

The order of operations

Search the name against the whole aisle. File in your company's name, in the classes on the first purchase order, with intent-to-use for the lines that follow. Lock the packaging artwork to the mark you filed. Put TM on the package. Then send the line sheet. When the goods ship, file the Statement of Use with a photo of the real product. Switch to ® when the registration issues.

Food and beverage brands can read more on the food and beverage page, and every price is on the all services page.

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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The search, the written opinion, the federal application and procedural Office Actions, for $2,600 or three payments of $950. Nothing is filed until you approve the search. If I call your mark low risk and the USPTO refuses it, I file again at no attorney fee.

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