Thanks for joining me today! Because we care about you and your business dearly, we’re posting a 3-part series on trademarks and the United States Patent and Trademark Office (“USPTO”) trademark application process. We’ll wrap it all up with a fourth post (called ‘the Wrap Up,’ of course) that will sum it all up. 

Today, in Part 1, we’ll focus on (i) a few of former First Lady Michelle Obama’s trademarks, (ii) the importance of early brand protection, and (iii) clearance risk assessments. 

The Warm Up

Did you know that there was an IMO podcast before the podcast, IMO with Michelle Obama and Craig Robinson (“IMO Obama”)? Did you also know that the first IMO podcast, IN MY OPINION PODCAST (“IMO UK”), even went as far as to ask former First Lady to change her name to avoid overshadowing their United Kingdom based podcast? 

Now, I don’t know everything, but what I will say is that former First Lady did not change that name, and here’s likely why. 

In the United States, individuals who use a mark without formally registering it are afforded common law trademark rights. These common law rights (i) are geographically limited and (ii) do not carry a presumption of ownership, meaning the owner must prove that they have the exclusive right to use the mark. In contrast, a mark that is formally registered with the USPTO receives nationwide protection, and the registrant benefits from a legal presumption of ownership and exclusive right to use the mark. 

The London

Now, IMO UK aired its first episode on July 1, 2020, and has earned roughly 2,700 views to date. The hosts are three young men who have consistently uploaded videos for roughly five years and have since accumulated over 30,000 subscribers on YouTube. However, despite all their success, IMO UK never sought formal trademark registration until March 11, 2025.

On the other hand, IMO Obama was not publicly announced until that very same day, but the IMO Obama USPTO trademark applications were filed four days before, on March 7, 2025, which was also four days prior to IMO UK’s filing. Many people might think this is where the story ends – “IMO Obama filed before IMO UK, so Obama wins”, but that’s simply not true. Contrary to popular belief, United States trademark rights are afforded to the owner who used the mark first, not necessarily the owner who first filed for the mark. 

So, then boom – IMO UK beats IMO Obama..right?? NO! 

This is because of what we mentioned earlier, common law trademark rights (i) are geographically limited and (ii) do not carry a presumption of ownership; consequently, they do not gain the same level of protection and exclusivity that federally registered marks gain. Additionally, American common law rights are afforded to Americans, or at least those on American soil. So considering that (i) IMO UK was launched in the United Kingdom and (ii) IMO UK’s trademark was filed solely in the United Kingdom trademark system, IMO UK didn’t stand a chance against Michelle Obama, or Craig Robinson for that matter.

The Breakdown

So, this brings us to the significant point of this Part 1- early mark diligence and protection is extremely important. A common mishap of many entrepreneurs and creatives is that they launch their brand or business before they’ve secured their marks, filed a trademark application with the appropriate trademark office, or, importantly, checked to learn what competition may exists for the mark. In the event the mark has already been registered or becomes registered by a third party before you get around to it, this can lead to intellectual property federal lawsuits, costly rebranding, and business reputational damage.

As an aside, if your brand or business consists of a mark with (i) a bona fide name or design and (ii) a product or service to be rolled out within the next three years, then it’s likely not too early to file for a trademark. 

This is attributable to the USPTO’s Section 1(a) and Section 1(b) trademark applications. A Section 1(b) intent-to-use trademark application allows you to apply for a trademark before your product or service is even in commerce. Whereas a Section 1(a) in-use trademark application is most suitable when your business and mark have already been launched in commerce. 

We will talk more about the benefits, drawbacks, and considerations of Section 1(a) and Section 1(b) applications in the next round.

But back to the matter at hand – early detection, better known as the clearance search. To alleviate some of the issues of misplaced investment, a comprehensive clearance search before you launch and build your brand is important. It’s also important even if you’ve launched but before filing your trademark application. 

The USPTO identifies a clearance search as a method that “[d]etermine[s] whether your trademark conflicts with the rights of a trademark owner who filed before you.”  A comprehensive search includes an analysis of a myriad of things such as the USPTO registered trademarks database, state databases, foreign registrations, and common law uses, to name a few. By identifying marks that are already registered or used in commerce, you can better evaluate how those marks may affect the likelihood of your mark successfully being registered with the USPTO. Even more, if you’ve conducted the diligence early enough, it can help you determined whether building your brand value on a mark that’s being used is optimal for your overall business strategy.

Depending on the team you work with, after completing the search, you may end up with a clearance risk assessment. Regardless of the format, you should be able to identify similar marks, conflicting marks, international class issues, and potential substantive refusal bases. After conducting the search and reviewing your assessment, you should be able to choose whether moving forward with the trademark application is the best course of action or if re-branding is the better option.

To bring this home, if IMO UK had (i) registered its mark with the USPTO before IMO Obama or (ii) been based in the United States with the benefit of common law trademark rights, the podcast might have been in a position to stop former First Lady from launching IMO Obama with as IMO (or led to the three young men comin’ up on a pretty penny to assign ownership of their trademark to IMO Obama – we will talk more about this in Part III). How, you ask? Because, based on my experience, before former First Lady invested in the building of the IMO brand, former First Lady and her team would have undertaken the early work that we are discussing. They would have, and likely did, conducted the search, developed the assessment, and reviewed and weighed their options. And you know who would’ve showed up in that search and assessment? You guessed it, IMO UK! 

So, the moral of this story is two-fold…(i) do the early work and (ii) do the work early.

From here, we move to part two, also known as Part II of T I’s Trademark Series, where we choose, draft, and file your trademark application with the various registers of the USPTO. 

1. Part I – First Things First:  Early Detection for Trademark Protection 
2. Part II – Filing a USPTO Application: Things to Know
3. Part III – After You File a USPTO Application: Corresponding with a USPTO Examining Attorney
4. Part IV – The Wrap Up

P.S.: I hope you enjoyed my J. Cole song headers as much as I did.

Footnotes

¹ After reviewing the United Kingdom trademark registration system, we were able to trace ownership of two trademark application filings to In My Opinion Podcast Limited, a UK entity consisting of host/s from IMO UK.

² When the USPTO refers to “use,” it specifically means use in commerce.

³  A trademark registration under the USPTO only registers your mark in the United States, the same way that a United Kingdom trademark only registers your mark in the United Kingdom. This is the case for most countries that utilize some sort of trademark registration system – because trademarks are jurisdictional.

⁴ Each category of goods or services is assigned a number from 1 to 45, also known as an international class.

⁵ A substantive refusal is a legally based refusal issued by the USPTO when a trademark does not meet the legal requirements for registration.