There are many factors to consider when deciding if it is time to file a trademark application. A trademark application should be filed sooner rather than later, because once it is too late, an owner may lose out on many of the benefits of a federal trademark registration.
A common question businesses and trademark owners wonder is when is the right time to file an application for federal trademark registration. This is a tricky question and trademark owners need to balance competing factors including the size of a company.
Take a moment and think about what trademarks you should apply for registration for
Some things to consider when deciding whether or not to file a trademark application are costs, how long the company plans to use the trademark, whether or not the trademark is something that will be accepted by the United States Patent and Trademark Office (USPTO) and more. However, the most important consideration is whether a company is worried another person will use the trademark somewhere else in the country. It is always better to file a year early than a day late and possibly lose some registration benefits or lose the right to use the trademark altogether.
Can the Trademark even be Registered?
The first question a trademark owner should consider before filing a trademark is if it can even be registered at the USPTO. For example, generic trademarks can never be registered, such as WHEAT BEER when used in connection with wheat beer. If a business is using a generic trademark, there is no sense filing a trademark registration because it will only be a waste of time and money. Hiring an honest trademark attorney to counsel whether a mark can be registered or not can save money and time upfront and should always be considered.
If your trademark cannot be registered, then STOP and do not apply for trademark registration
A trademark may be barred from registration for other reasons, especially registration on the Principal Register, but it still may make sense to file. For example, surnames, geographic marks, and descriptive marks cannot be registered trademarks unless the trademark owner can show they have acquired distinctiveness. After five years of use, the trademark owner has a prima facie case the trademark has gained secondary meaning and can be registered. Even if the USPTO denies the mark has acquired distinctiveness, the mark likely can be registered on the Supplemental Register, which gives some benefits to the trademark owner.
How Long will the Trademark be Used?
One of the first things to consider is how long does the business intend to use the trademark. Trademarks that are also the company name are going to be used for the life of the company. Therefore, companies should file for a trademark registration for their name early. The company name is one of the most important assets to a business and the best way to protect the name is to file a trademark application.
For other trademarks owned by a company, such as individual product lines or product features with unique names, businesses should determine whether the trademark is going to be used only for a season or two or if it is going to be used for multiple years. If a trademark is going to be used for a less than a year, chances are the trademark owner will not even receive the registration certificate before they stop using the trademark. Therefore, companies should only consider filing for a trademark if they plan to use the mark for over a couple of years.
How Important is the Mark to a Company?
How important a trademark is to a company is similar to how long a company will use a trademark. For example, the company name is likely the most important trademark or service mark a company owns. Therefore it is important to file for a company name early.
Sometimes it is hard to know beforehand how important a trademark will be to a company. For example, a new product may seem like any other being launched but for whatever reasons sales explode. When a products or services are doing exceptionally well under a secondary mark, the company should file a trademark application to protect their marks that make the most money.
Another factor companies need to consider when filing a trademark application is what is there legal budget? For example, a large multinational company will likely have a large budget allocated to legal every year, and in particular to trademarks. The larger companies can be more liberal with their trademark filings and if some of their trademark end up not even being used or turn out to be duds, the costs associated with the individual application will not jeopardize the company.
However, smaller companies need to be more selective with filing trademark applications because they likely do not have the trademark budgets a large corporation dedicates to trademarks. One misfire with a trademark filing is much more costly to smaller companies with smaller profits and budgets.
Better to File Early than Late
Trademark law is based on priority. Trademark priority is essentially whoever used a trademark first has superior rights to any subsequent user in that area. Without a federal trademark registration, trademark owners must rely on common law rights. Relying on common law trademark rights can become problematic, especially for companies who are local and regional but have plans to expand nationally.
For example, if a company uses a trademark in New England, and then a later company uses the same mark in Texas, the New England company cannot stop the Texas company unless it already has a federal trademark registration. In addition, the New England company would no longer be able to expand use of their trademark into Texas. When possible, it is better to be safe rather than sorry. That is why it is better to apply for a trademark registration a year or two too early rather than a day too late.
Do you have any questions whether now is the time for your company or brand to file a trademark application? Reach out to us by filling out the Free Trademark Consultation form and we will do our best to counsel you about whether you should file now or wait.