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.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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