Can a phrase using common words be used on apparel when a pending trademark of that phrase exists?

Question

I’d like to use a two-word phrase of common words on my apparel line (t-shirts, caps, etc.), but I found a trademark filing for these words. From what I see on the TSDR the trademark is a service mark that is still pending. The Mark information is a Standard Character Mark with no claim to font style, size, color. The original filing was in 2021 and the last status was on 2/6/2024 as “Notification of Non-Final Action Emailed.” What does this status mean? And since it is still pending, can I use the phrase on my apparel items?

James L. Arrasmith · Answer

Good questions! To answer this: 
 
- The trademark with a status of "Notification of Non-Final Action Emailed” means the USPTO examiner issued an initial refusal or required some changes to the application. It is still pending and not registered. 
 
- Importantly, a pending trademark application still provides enforceable common law rights for the owner if the mark is being actively used in commerce. So the pending status alone does not make it usable by others. 
 
- Using an identical or confusingly similar mark on apparel could potentially still infringe on the pending application holder’s rights and prompt legal action. This is especially true if in the same geographic area or market. 
 
- That said, relatively common phrases can sometimes be shared more freely without confusion. But an attorney should research if your particular phrase + apparel line poses enough risk here. 
 
In summary - consult an intellectual property attorney to assess the uniqueness of the phrase, the pending applicant's usage and rights, and whether your intended apparel usage crosses boundaries. An evaluation is recommended before proceeding.

Q: Can a phrase using common words be used on apparel when a pending trademark of that phrase exists?