Can you license a trademark that is still pending at the USPTO?

Brands and creators rarely wait a year or more for a registration before launching a collaboration, a merch line or a regional partner. Our page on IP licensing and assignments covers the license terms that carry the money. This page covers the trademark question underneath: what a license of a pending mark does for the application, and what can go wrong before registration.

How licensing a pending mark works, step by step

1. File first. The filing date matters: an application is constructive use with nationwide priority for the listed goods, contingent on registration (15 U.S.C. 1057(c)).
2. Sign a license with real quality control. Use by a related company, meaning one whose use the owner controls as to nature and quality, inures to the applicant (15 U.S.C. 1055; 15 U.S.C. 1127).
3. The licensee launches. If its first use is controlled by the applicant, that "first use shall inure to the benefit of the registrant or applicant" (1055).
4. File the allegation of use. For an intent-to-use application, the applicant files an amendment to allege use or, after the notice of allowance, a statement of use within six months, extendable up to 36 months in total ($150 per class; extensions $125 per class).
5. Use the licensee's products as the specimen. The applicant may rely on related-company use, and the USPTO does not require an explanation of how the applicant controls it (TMEP 1201.03(a)).
6. Keep control through registration and after. The licensee's continued sales are the applicant's use for maintenance purposes as long as the control continues.

Why is licensing allowed when assigning is restricted?

Because a license does not move ownership. Section 10 of the Lanham Act bars assigning an intent-to-use application before an allegation of use, except to a successor to the applicant's ongoing business, to prevent "trafficking" in marks (15 U.S.C. 1060(a)(1); TMEP 501.01(a)). A licensed applicant keeps ownership and controls the goods, so the mark still stands for one source. That is why a license is often the right structure when a partner wants to start using a name before the applicant has used it; our page on selling a trademark application before use covers the assignment rule in full.

What can go wrong before registration?

• A refusal. The examiner may find the mark likely to be confused with an earlier registration. Our page on responding to a likelihood-of-confusion refusal covers the options, which can include narrowing the goods the licensee is selling.
• An opposition. After publication, a third party can oppose; our page on what happens in a TTAB opposition explains the timeline.
• A senior user. Constructive use priority does not beat someone whose mark was in use, and not abandoned, before your filing date (1057(c)). A licensee investing in inventory should know the clearance picture.
• A specimen problem. If the licensee's labels or website do not show the mark as a brand, the statement of use can be refused; see our page on specimen refusals.
• Lost control. If the applicant does not actually control the licensee's goods, the licensee's use may not count for the applicant, and the TMEP warns that failure to control licensees can lead to a finding of abandonment (TMEP 1201.03(e)).

What should the license say about the application?

A license of a pending mark needs a few terms an ordinary trademark license can skip:

• Status and no promise of registration. The licensor confirms it owns the application and describes its status, without warranting that it will register.
• Prosecution control. The licensor controls the application, responses and any opposition; the licensee agrees not to file for the mark itself or anything similar.
• Evidence of use. The licensee reports its first sale dates and sends labeled product photos. A statement of use must state the date of first use anywhere and in commerce (37 CFR 2.88(b)), and with controlled licensed use those are the licensee's dates.
• Changes the USPTO forces. If an examiner requires narrower goods, or an opposition settles with limits, the licensee accepts the narrowed scope, and the royalty or minimums adjust by a stated formula.
• The failure case. If the application is finally refused or abandoned, who pays for rebranding, how long the licensee can sell existing stock, and whether either party can end the license.
• Enforcement before registration. Until registration, claims against copycats rest on common law rights and the federal false designation provision in section 1125(a), so the license should say who decides whether to act.

These terms sit alongside the business terms covered on our main copyright and trademark page and our licensing page: term, territory, products and money.

What changes the answer

• Use-based versus intent-to-use applications. A use-based application already claims use, so a license adds licensed sales; an intent-to-use application may depend entirely on the licensee's first use to reach registration.
• Who is selling what. Related-company use must be on the goods or services in the application. The TMEP notes that related-company use was not at issue where the claimed related company sold different services than the application listed (TMEP 1201.03).
• A licensee cannot claim the mark. If the record identifies the applicant as a mere licensee, registration is refused, and a licensee cannot rely on the licensor's use to establish its own priority (TMEP 1201.03(e), 1201.04).
• Merchandise in new classes. A license for goods outside the application's classes does not help that application; our page on trademark classes for merchandise explains how to cover them.
• Exclusivity. An exclusive license of a pending mark is still a license. If the partner wants ownership, the assignment rules apply, and the transfer must be recorded, as our page on recording a trademark assignment explains.

A worked example

Common mistakes

• Assigning when you mean to license. Before use is alleged, an assignment of an intent-to-use application to a non-successor can void it.
• Licensing with no control. The licensee's first use counts for you only if you control it.
• Letting the licensee file. Only the owner who controls quality may apply.
• No plan for a refusal. The license should say what happens to royalties, inventory and exclusivity if the application fails.
• Forgetting the statement of use deadline. The licensee's launch date and the six-month windows need to line up.
• Treating a creator collaboration as informal. Brand collaborations need the same paper; our post on IP licensing for creators and brands covers the creator's side.

What to do this week

1. Confirm the application's status, basis and goods in TSDR.
2. Check that the licensee's planned products fall within the listed goods and classes.
3. Put quality standards, approvals and sample rights into the license before the first sale.
4. Add terms for refusal, opposition and abandonment of the application.
5. Require the licensee to send dated photos of labeled products for your statement of use.
6. Diary the notice of allowance and statement of use deadlines.

Frequently asked questions

Does a license of a pending mark need to be in writing?

The TMEP says a controlled license may be recognized whether oral or in writing. A written license is still the practical way to prove control and set the commercial terms.

Can the licensee's sales be my first use?

Yes, if you control the nature and quality of the goods. Section 1055 says such controlled first use inures to the applicant.

Can I file the statement of use based only on my licensee's sales?

Yes. The USPTO allows an applicant to rely on use by related companies and does not require an explanation of the control (TMEP 1201.03(a)).

What if someone else filed for a similar mark first?

An earlier application or registration can block yours, and a prior user may have rights regardless. Our page on what to do when someone files for your brand covers the routes when the conflict runs the other way.

Can I grant an exclusive license before registration?

Yes. Exclusivity is a contract term. The licensee still does not own the mark, and the license should address what happens if the application fails.

Should I record the license with the USPTO?

It is optional. The USPTO records licenses to give third parties notice of the interest (TMEP 503.02), but recording does not change who owns the application.

Zala IP Law drafts trademark licenses and files and prosecutes the applications behind them, and Shreepal J. Zala practices federal intellectual property law nationally. If a partner wants to launch before your registration issues, request a consultation or call 404-313-1701.