Trademark timing: When is the right time to trademark a product or company name?

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. The right trademark timing can make a huge difference.

To determine the best trademark timing, let’s dive into the factors that lean towards urgency versus those that suggest waiting.

Trademark timing for registering 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.

The best practice would be to search the USPTO trademark database first. If you do not find any confusingly similar marks, then move forward with:

  1. incorporating the entity; and
  2. 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.

Trademark timing for registering 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.

Thinking of register your trademarks?

Reach out to patent and trademark attorney Vic Lin by email or call (949) 223-9623 to see how we can help you obtain trademark registrations for your company name and product names.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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