Can you trademark before launching product?

What comes first: filing trademark or launching product?

The US trademark registration system is different from the rest of the world. With a few exceptions, one generally must use the mark in connection with goods or services in US commerce in order to obtain a federal trademark registration from the USPTO. Should business owners first launch the product, and then file apply for a trademark? Or can anyone file a trademark application before launching product?

What would be a prudent trademark strategy for entrepreneurs planning to launch a product? The earlier the filing, the better. Ideally, you should file a trademark application before revealing your mark.

How can a trademark application be filed before product is on the market?

Anyone can file a trademark application before selling product. It’s called an Intent-To-Use application, or simply ITU application. The USPTO has provided this helpful timeline for an ITU application. As suggested in its name, the applicant must have a bona fide intent to use the mark on the goods or services identified in the trademark application.

There is no limit to how many goods or services you can include in an ITU application. We recommend identifying a realistic list of items. You can err on the side of including more, but make sure to delete the unused items when it comes time to show use.

Launching product after filing trademark application

Now that your ITU application has been filed, you can proceed with your product launch without having to worry that someone else might beat you to the USPTO with a trademark application for the same mark. You’ll pay a bit of premium for this peace of mind. Expect an additional cost of filing a Statement of Use after you have begun using the mark in a satisfactory manner.

Usage is required for registration

Unless your application is based on a foreign registration, use is still required to register your mark. Do not file the Statement of Use prematurely. “Use in commerce” of a trademark has strict requirements that must be satisfied before submitting evidence of use to the USPTO. Once a Statement of Use has been filed, your options will be limited. You may be locking yourself into a situation where there may not be enough time to use new specimens should your original specimens get rejected.

So take your time. Go to the trade show. Launch your product. Start that crowdfunding campaign. All the while, keep in mind that you will need to do more before you can safely file a Statement of Use with proper dates of first use.

Huge advantages of earlier trademark filing date

This extra cost of a few hundred dollars for a class of goods/services is well worth the earlier trademark filing date. By filing earlier, you place the burden on later filers to challenge your application. Subsequent applicants must file a trademark opposition (for pending application) or cancellation (for registration), and prove likelihood of confusion and priority.

When will the USPTO grant your trademark registration?

When does a pending application mature into a registered trademark? After the applicant submits evidence of use, the Trademark Office will review the specimens. If acceptable, a trademark registration will be issued in due course. If not, an Office Action will be issued requiring an appropriate response by a certain deadline.

You cannot use the circle R symbol until after the mark is registered. So avoid using the circle R symbol when submitting specimens.

How useful was this post? (Did you find the information you needed?)

Click on a star to rate it!

Thank you for rating my post!

We want to do better.

Could you tell us what was missing in our post?

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.

Follow us

Copyright © Vic Lin 2023