Any client interested in protecting its intellectual property should apply for a trademark as quickly as possible to ensure the maximum amount of legal protection. The trademark does not need to already be in use in interstate commerce or even have an online presence in order to file a trademark application. In fact, under the United States Patent and Trademark Office (USPTO) system, a trademark owner can apply for a trademark under an intent-to-use basis before any actual business has been conducted in association with the trademark. Waiting to apply for a trademark until you start using it can cause serious financial and legal difficulties for the client’s business if it discovers another entity using its trademark later. Applying for a trademark quickly can be to the client’s advantage, and it’s our job a trademark counsel to help client’s navigate the process to ensure their legal rights remain protected.
Early Business Development Stage
Even clients at an early business development stage have the legal right to apply for a trademark. Remember, the trademark application process is a long one. Once the application is filed, it takes some months for it to be examined and approved. If the trademark is filed on an intent-to-use basis, once it is approved, the trademark owner has 36 months from that time to prove evidence of use in interstate commerce. During that time, the trademark owner must file documents with the USPTO every six months to let the USPTO know it is still interested in its trademark. So long as the trademark owner ultimately demonstrates use, it will receive a trademark registration with a priority date dating back to the date the original date the application was filed. This can be critical in any enforcement proceedings. Talk with your clients to discover their business plans and file for all the goods and services they intend to use in the near future.
Advantages of Filing for A Trademark Early
There are many advantages of filing for federal trademark protection and doing so as early as possible. Some of these include the following:
- Within days of filing, the trademark application will be listed and searchable in the USPTO database, giving constructive notice to any other business that may wish to use or adopt a similar trademark.
- Once the trademark application is filed, it is eligible to be filed with the Amazon Brand Registry provided it meets the other requirements set forth by Amazon.
- Trademark infringement happens when another party uses the trademark without permission in a way that is likely to cause consumer confusion for the same or related sale of goods and services. Filing for a trademark early may provide a business owner with senior rights to that trademark, depending on when the registration issues.
- Filing for a trademark as soon as possible helps avoid the costs of proving your prior common law rights against someone who later files their trademark at the USPTO after you.
- If an issue of trademark infringement occurs, having a registered trademark simplifies and expedites the entire legal process to defend your trademark.
Want to Learn More?
Remember, applying and receiving approval for your client’s trademark eliminates a great deal of costly and time-consuming legal challenges that may present themselves in the future.
If you would like to learn more about the timing of filing trademark applications, consider joining our Trademarkabilities® Masterclass. You learn more about our courses here to enroll or reach out to us for more information. Or, you can join our mailing list, and download our free e-guide “5 Tips for Trademark Attorney Success.”
Stacey C. Kalamaras is the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. Stacey started Trademarkabilities to share her passion teaching the law with the next generation of lawyers and help them become practice ready lawyers. Contact us at: firstname.lastname@example.org.
Stacey is also a seasoned trademark attorney and currently works in-house as Senior Counsel for a multi-national candy company. She previously owned her own solo trademark practice, which she scaled and sold. She has been recognized by her peers for her outstanding knowledge and service in intellectual property law.