When your company name is also the name of your product
It’s best to search the USPTO trademark database for your startup company name before incorporating. A trademark search will provide not only peace of mind, but also a helpful assurance that you ought to be able to sell product under the desired trademark with lower risk of trademark infringement. Your startup company name will often become the brand you wish to build in the mind of your customers, so make sure it’s a good trademark that won’t be fraught with issues from the get-go. A thorough search will reduce the probability of having to transition to a new startup trademark.
Should startups file Intent-To-Use or use-based trademark applications?
For a new name or logo that has not yet been used on the product or service, it may be worthwhile to file an Intent-To-Use application to secure an earlier filing date. This would be a strategically wise move for highly creative and distinctive marks. Otherwise, you risk someone else encountering your trademark in the marketplace and applying first for a trademark similar to yours.
If the mark is already in use, it may be worthwhile to conduct a knockout search before filing. It may seem counterintuitive, but you could be better off not filing a trademark application for a mark that you’ve already been using for awhile. This could allow you to fly under the radar of certain trademark owners who monitor new applications for marks they consider to be too close to theirs.
Startup trademark cost considerations
An ITU application generally costs more than a use-based application due to the subsequent task of filing a Statement of Use. In a use-based application, the pertinent specimens of use and associated dates are gathered upfront and included with the initial filing.
Time vs. money considerations for startups
If time is more valuable to your company that one or two thousand dollars, it may make sense to file multiple ITU applications for various marks to see which ones get preliminarily approved.
If money is more important than time, choose the best mark and file the trademark application properly to avoid delays and potential additional legal costs down the road.
Responding to trademark Office Action refusals
Registration of your mark may be refused for a number of reasons. The two most common grounds of refusal are likelihood of confusion (i.e., your mark is too similar to a prior filing) and mere descriptiveness (your mark describes a feature or quality of the goods or services).
A knockout search prior to filing can assess the risk of a likelihood of confusion rejection. If you attempt to search for similar marks on your own, keep in mind that the other marks do not have to be identical in order to block your registration. If the examining attorney believes your mark is “confusingly similar,” your application will get rejected. You’ll have an opportunity to respond, but it might not be cost-effective unless you have strong arguments to the contrary.
File trademark application before or after incorporating?
If a trademark has not yet been used, we generally recommend filing Intent-To-Use trademark applications after incorporation. It can be tricky to transfer ITU applications from an individual to a company if the mark had not yet been used at the time of transfer. If you are in a rush to file an ITU application for mark before your startup has been formed, just keep in mind that the trademark assignment must be carefully drafted to effect a proper transfer of an ITU application.