When is the right time to file a trademark application?
Trademarks differ from patents in terms of timing. Unlike patent deadlines, there is no strict due date for filing a trademark application, although there can certainly be negative consequences for waiting too long. Assuming that you do not have enough cash now to apply for all desired trademarks, it will be critical to time your trademark filings wisely.
To determine the best trademark timing, let’s dive into the factors that lean towards urgency versus those that suggest waiting.
Right time for trademarking company name
The best time to think about trademarking a company name is actually before you incorporate. Many entrepreneurs make the mistake of checking only the corporate registrar of the state in which they wish to incorporate (e.g., Delaware Division of Corporations or California Secretary of State). As long as the exact name is not already taken, a startup will incorporate under its desired company without thinking about nationwide trademark issues.
The problem with checking only the corporate database of a desired incorporation state is that there is still risk of trademark infringement even if a company name is available within a particular state. Incorporating under a desired name does not offer any protection against an owner of a federally registered trademark with nationwide rights.
- incorporating the entity; and
- filing an Intent-To-Use (ITU) trademark application for the company name to cover the goods and services you intend to sell under this new entity.
Right time for trademarking product names and logos
The best time to trademark a product name depends upon when you plan on first selling the goods or services. If you’ve already begun selling product under the name, then do not wait any longer to file a use-based trademark application.
If you have not yet begun selling product, it might make sense to wait depending upon how time will pass before you’re ready to launch your product. Keep in mind that an ITU application requires a subsequent filing to show evidence of use, which will incur additional costs. So, if you are within a matter of days or weeks of the initial product launch, it might make sense to wait until after the launch to file a use-based application to save some money. The risk of waiting, however, is that a third party may beat you to the USPTO in applying for a similar mark for similar goods or services.
Earlier filing date with later use vs. Later filing date with earlier use
Trademark rights are determined by who has trademark priority. And trademark priority is generally given to the party who first uses their mark in commerce. That being said, there are many practical advantages to filing first.
USPTO examining attorneys review trademark applications based on order of filing date. Previously filed trademark applications must be examined to a final outcome before subsequently filed applications may be examined. Subsequent applicants will bear the burden of opposing or canceling prior-filed trademarks.
In an ideal world, the applicant with earlier trademark usage should prevail in an opposition. But, reaching a final judgment with the USPTO Trademark Trial and Appeal Board (TTAB) can take years of time and tens of thousands of dollars. Filing first puts you in the driver’s seat and places the burden on subsequent filers to prove their case.