One of the most frequent questions I see from a new business or startup is when to register their trademarks. Unfortunately, the always favorite attorney answer of “it depends” applies across the board here. But, there are some things to think about that can help you determine when the right time to hire that trademark attorney and get your mark registered is.
The United States is a first to use jurisdiction. What does that mean? All it means is that the first person to use the desired mark (slogan, logo, saying, brand name etc.) in commerce, gains protection through the common law.
One of the biggest issues when it comes to trademark’s and registration is establishing priority over another person with the same or similar mark. So, filing your application early on can help establish priority.
The argument for early filing:
Filing your trademark application early on in your business can be very important. For example, let’s say you have a great, and pretty unique name for your business that you have been using for approximately one year. After you develop a strong presence in the marketplace and you’re pretty comfortable your business isn’t going anywhere you decide to file your trademark application. You hire an attorney and they perform an extensive search before starting the application process, and low and behold someone has already filed for the same exact mark you are using in the same exact class of goods or services as you!
Now, you may have priority over the mark but unfortunately, it isn’t as easy as calling up that applicant and asking them to withdraw their mark. You have two options in this scenario, you can oppose the application or try to have it canceled after registration. However, both of these options are usually costly. Had your application been filed early on, the USPTO would have handled the other application for you and nothing would have been needed on your end.
Another important thing to note is that if you don’t challenge the applicant on this, you might be forced into using your mark in one single geographic area. The federal trademark registration will grant nationwide rights to the mark. You as the business owner likely have established common law rights in the mark, in a limited geographic area and not challenging the mark will keep you there. No matter the route, if you find yourself in this situation it will cost you. Filing your application early might be one of the best ways to avoid this.
Intent to use applications and establishing priority:
Depending on the type of business you are in, establishing priority through the filing of an application might be the smartest move you make when it comes to your IP. Many people are under the impression that you cannot file an application until you are using your desired mark in commerce, so they wait, and then all of the sudden 4 years has passed and no mark is ever filed for.
But, you have another option if establishing priority is on the top of your to-do list when starting and growing your business. It is called an intent to use application (or 1b application in our world). With this, you can file for the mark you know you are going to use and you will have six months from publication to show the USPTO that you are using the mark in commerce. That six-month timeline can be stretched a little, but it’s always best to try to stick to six months.
There are some additional filing fees for intent to use applications, but it can be worth the extra $100 if you have your heart set on a brand or business name, and you don’t want to risk losing it to another company.
What you should take away-
Although the US is a first to use jurisdiction, and common law protection of your mark is granted as soon as you use the mark in commerce, that protection is usually geographically limited. It is very important to establish priority of your mark through the application process. There are definitely instances where I think a business can wait to file for their mark, so don’t all rush to get your application in. But, maybe rush to call a trademark attorney and discuss your business, your goals, and what your current IP portfolio looks like to make the most informed decision you can about registration.
If you’re ready to go over your options for registration send me an email at Shannon@montgomerypllc.com I would love to chat!
Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic