What a Pending Trademark Cannot Do

By Paul S. Rafelson, Founder, Rafelson Law PLLC

A pending trademark application can open some doors in Amazon Brand Registry, but it is not a registration. In court, a pending mark cannot support a claim for infringement of a registered mark under 15 U.S.C. § 1114, and it carries none of the statutory presumptions that come with registration. An unregistered mark still supports a claim under 15 U.S.C. § 1125(a). On Amazon, some protection programs require a registered mark. Amazon’s current program terms control. Rafelson Law PLLC is not affiliated with Amazon.

What are the limits on Amazon?

According to Amazon’s published materials, some Brand Registry programs are tied to a registered mark. Amazon’s Project Zero page requires an active registered trademark in the relevant country store. Amazon’s Transparency page also requires an active registered trademark. Amazon’s current materials tie trademark infringement reports through Report a Violation to a registered mark. A pending application is a bet on registration. If the application is refused or abandoned, expect Amazon to revisit the enrollment built on it. See what a pending trademark gets you for the full comparison.

What are the limits in court?

Federal registration adds rights that a pending application does not have. The main differences are in the table.

Question	Pending application or unregistered mark	Registered mark
Infringement claim under 15 U.S.C. § 1114	Not available; the statute covers registered marks	Available
Claim under 15 U.S.C. § 1125(a)	Available if the mark is protectable and confusion is likely, based on use	Available
Presumption of validity, ownership and exclusive right (15 U.S.C. § 1057(b))	None from the application	Prima facie evidence for the goods listed
Nationwide constructive notice (15 U.S.C. § 1072)	None	Registration is constructive notice of the claim of ownership
Priority from the filing date (15 U.S.C. § 1057(c))	Depends on a registration issuing; it matters only then	Takes effect from the filing date
Incontestability (15 U.S.C. §§ 1065, 1115(b))	Not available	Available after the statutory conditions are met
Counterfeiting remedies (15 U.S.C. §§ 1116(d), 1117(c), 1127)	Not available; a counterfeit is defined by reference to a registered mark	Available when the statutory conditions are met
Recording with U.S. Customs and Border Protection (19 C.F.R. § 133.1)	Not available; recordation is for registered marks	Available
Use of the ® symbol (15 U.S.C. § 1111)	Do not use it; use of ™ is accurate	Allowed for the registered goods

Why does the filing date still matter?

An application to register a mark on the Principal Register is treated as constructive use of the mark. It gives nationwide priority from the filing date, but only if a registration issues (15 U.S.C. § 1057(c)). That priority is subject to exceptions for people who used the mark earlier or filed earlier. In a dispute with another seller over who came first, the actual first-use dates matter as much as the filing date, so keep dated records of the first sale, the first listing and the first use of the mark on the product.

What can a pending mark still do?

Support a claim under 15 U.S.C. § 1125(a) for an unregistered mark you use in commerce. You must prove the mark is protectable and confusion is likely. An intent-to-use application with no actual use gives you no § 1125(a) claim. See trademark vs. copyright in court.
Support claims under state unfair-competition law where the facts fit.
Support a demand letter that states the rights actually held. A letter that overstates the rights (for example by calling a pending mark “registered”) creates risk for the sender.
Support an opposition to a conflicting application. Anyone who would be damaged by the registration is allowed to oppose (15 U.S.C. § 1063). A brand with earlier use, or an earlier filing date, usually has the stronger ground.
Open some Brand Registry tools, as described in Amazon’s materials.

What are the common mistakes?

Treating Brand Registry enrollment as ownership of the mark.
Calling a pending mark “registered” or using ® before registration.
Building a business on a mark that a search would have shown to be refusable.
Not keeping first-use records.
Not filing in the countries where the brand will sell, since rights and Brand Registry eligibility are country-specific.

How do I get started?

Contact us. Tell us the brand, the application number and what is happening with the mark, and we will tell you whether we can help.

Realistic expectations

We cannot guarantee that a trademark application is registered, that Amazon accepts a report or any particular outcome.
Amazon’s Brand Registry eligibility and tools are set by Amazon and change; Amazon’s current program terms control.
Laws, platform programs and their terms change; confirm current terms before acting.
Past results do not guarantee similar outcomes.

Frequently asked questions

Can I sue for trademark infringement with only a pending application?

Not under 15 U.S.C. § 1114, which covers registered marks. A pending application does not give you that claim. You may still bring a claim under 15 U.S.C. § 1125(a) based on use of an unregistered mark, if the mark is protectable and the defendant’s use is likely to cause confusion.

Does a pending trademark give me the presumptions that come with registration?

No. The prima facie evidence of validity, ownership and exclusive right in 15 U.S.C. § 1057(b) comes from a registration, as do nationwide constructive notice and the incontestability rules. With a pending application, you carry the burden of proving the mark and your rights through use.

What is constructive-use priority?

An application for the Principal Register gives nationwide priority as of its filing date under 15 U.S.C. § 1057(c), but only if a registration issues. The priority is subject to exceptions for earlier users and filers. Actual first-use evidence still matters in any dispute about who came first.

Can I use the registered symbol while my application is pending?

No. The ® symbol is for registered marks, and using it before registration can create problems, including in later enforcement. Use ™ for a mark you claim but have not registered. A statement that a pending mark is registered, in a demand letter or listing, can create risk for the sender.

Can I record a pending mark with U.S. Customs and Border Protection?

Recordation with Customs under 19 C.F.R. § 133.1 is available for marks registered on the Principal Register, not for pending applications. A brand worried about infringing imports should consider whether to pursue registration promptly and what other enforcement routes are available in the meantime.

Can a pending mark use Amazon’s Project Zero?

According to Amazon’s Project Zero page, the self-service counterfeit removal tool requires an active registered trademark in the relevant country store. A pending application alone does not meet that requirement. Amazon sets these terms and can change them, so confirm the current requirements in Brand Registry.

What if my application is refused?

A refusal does not end the matter. The applicant can respond to the refusal, amend or in some cases appeal, and you may still have use-based rights under 15 U.S.C. § 1125(a). A refusal can, however, affect Brand Registry access and enforcement plans, so decide early how the brand will operate if registration does not issue.

Amazon Brand Registry

Enrollment and brand tools for sellers on Amazon.

What a pending trademark gets you

What Amazon’s published materials say a pending mark can access.

Trademark vs. copyright in court

What each right allows in court.

Reporting infringement through Brand Registry

Reports for design patents, copyrights and trademarks.

Intellectual property for online businesses

The overview of IP matters for online businesses.

Sources and notes

Amazon Project Zero page (sell.amazon.com/brand-registry/project-zero). Amazon Transparency page (brandservices.amazon.com/transparency). Amazon IP Accelerator page (sell.amazon.com/programs/ip-accelerator).
15 U.S.C. §§ 1052, 1057(b)-(c), 1063, 1065, 1072, 1111, 1114, 1115(b), 1116(d), 1117(c), 1125(a), 1127; 19 C.F.R. § 133.1.

About the author

Paul S. Rafelson is the Founder of Rafelson Law PLLC, a law firm for eCommerce and online business owners. The firm’s practice focuses on Amazon account issues, eCommerce mergers and acquisitions, Proposition 65 and related corporate work. He holds an LL.M. in Taxation from NYU (2017). He founded the Online Merchants Guild in 2018, a volunteer-led trade association run by and for Amazon sellers. He taught state and local taxation as an adjunct professor at Pace Law School. Katherine (Katie) Dariano is a Senior Counsel at the firm. Full biography.

Background

Founder, Rafelson Law PLLC; office at 2255 Glades Rd, Suite 319A, Boca Raton, FL 33431.
Admitted to the bars of Florida (2005) and New Jersey (2006). Katherine Dariano is admitted in New York (2021).
LL.M. in Taxation, NYU (2017).
Before private practice, Paul was in-house counsel at Microsoft, Walmart and GE.
Paul founded the Online Merchants Guild in 2018, a volunteer-led trade association run by and for Amazon sellers. More on the Guild's About page.
Paul taught state and local taxation as an adjunct professor at Pace Law School.

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