Does My Kickstarter Qualify as Intent to Use under Trademark Law?
Before you launch a crowdfunded project like a Kickstarter, you need to ask yourself, “Does my Kickstarter constitute a bona fide use or intent to use my trademark in commerce?
A common hurdle that intellectual property attorneys face is that the law has often not caught up with current technology, let alone new technology just about to launch. The simple fact is that this scenario is only going to become more commonplace. The combination of technological advances and the speed at which they are being developed will continue to create new questions that will require careful analysis based on each client’s unique goals and risks.
Although crowdfunding itself is not new, the internet has revolutionized the concept, and in the process presented questions that may affect your ability to protect your trademarks when launching a Kickstarter, Celery, appbackr, Indiegogo, PledgeMusic, or other crowdfunded venture. While it should go without saying, the notions put forth in this article, apply to a strong trademark and branding strategy that has been subjected to a comprehensive trademark clearance and thorough analysis of potential legal issues.
When you seek a trademark registration is just as important as how you go about it. Putting it as straightforward as possible, you should almost always consider filing a trademark application prior to putting your product before the eyes of untold millions of consumers and subjecting yourself to potential risks due to a lack of adequate legal protections. You must next consider your current use or intention to use the trademark in connection with your product.
Whether we are talking about common law rights or rights obtained through registration of a trademark, use is always a key element. The rationale behind this policy is that federal registration of a trademark grants to the owner exclusive nationwide use of that mark. A trademark owner may not “warehouse” the trademark. In other words, if you don’t use it, you lose it. Prior to the internet, the legal concept of “use in commerce” was crystal clear compared to today. The current regulations were written long before Kickstarter was even in the realm of possibility.
The Trademark Law Revision Act of 1988 added an intent to use option, and at the same time narrowed the definition of bona fide use. These changes were necessary as “token uses” although tolerated, were often of questionable faith and ran opposite of the policy behind the trademark laws.
Under these revisions, companies have learned through others missteps, that the mere advertising of a product for sale or the raising of money to design or manufacture, does not constitute “use in commerce”. In addition, although an intent to use application may solve this issue, such may not be the case if your Kickstarter or other crowdfunded project is based on an idea or concept that is not established enough to qualify as a bona fide intent to use the mark in commerce.
The key to all of this is that the term use in commerce means interstate sales of the goods sufficient enough to qualify as more than a token use. The case with many crowdfunded projects is that the goods are often not past the prototype stage, let alone ready to be shipped instantly once each person funds the project. There are however, strategies that a knowledgeable attorney can advise you of which may overcome these challenges.
Waiting until the project is successfully funded to seek trademark registration can result in costly complications that can be prevented if handled properly in advance. All too often, the person or corporate entity behind a successful Kickstarter or similar crowdfunded project makes shortsighted decisions or simply fails to evaluate their intellectual property risk and goals at all. Doing so, can pose a lurking doom that can ultimately lead to the failure of the entire project.
A knowledgeable attorney can be an asset when dealing with any legal matter. If you have questions or concerns about your intellectual property I would be happy to discuss your situation. I can be easily reached by clicking on the Contact Sturman Law button on any page of SturmanLaw.com