The importance of registering your trademarks cannot be overstated. At a minimum, file an Intent to Use application, if you intend to use the trademark. But you should definitely file for trademark protection the moment you start to use your mark. Why? Because if you snooze, you will absolutely lose. Even if you prevail after a protracted court battle, such a win will hardly seem like success after paying court costs and legal fees. Ask Zoom Video Communications (“ZM”), the audio teleconferencing service provider of ZOOM.
As of 2020, ZM has revenue of $2.65 billion and its stock has continued to rise over the past 12-months. Despite that, ZM is likely crying because it waited too long before filing for trademark protection. The company has received a flurry of U.S. Patent and Trademark Office (“USPTO”) suspension letters and Office Actions. These administrative actions prevent ZM from registering its valuable ZOOM trademarks. And, it’s doubtful that Zoom Media Group, Inc. or any other Zoom related registrant will give up its registration to allow ZM to register its marks. Bad news for ZM.
According to USPTO filings, ZM first used the trademark Zoom on May 31, 2012. Yet, ZM waited until 2017 to file its first application. By that time, smart entrepreneurs pounced on the opportunity to register their marks. They seized the moment.
The United States is a first-to-use country when it comes to trademark protection. That means, the first person to use a trademark, as a trademark, has priority. The problem arises if someone other than the senior user files for registration first. That is what happened with ZM. Even though ZM appears to have priority, it waited before filing. It’s now being blocked from securing registrations for Zoom and its other Zoom-related marks. It can challenge the prior registrants, but a battle is likely to ensue.
Don’t wait to file for your trademark registration. As soon as you intend to use it, FILE IT! The Intent to Use application is a placeholder, so long as you have a bona vide intent to use the mark.
Francine D. Ward
Attorney-At-Law, Author, Speaker