For the new business that is just starting out, a common question is, “When is the right time to file a trademark application?” Should business owners bother registering before their product or service is ready, or just wait until they’re ready to officially launch to the marketplace?
In the U.S., a business gets common law rights to a name as soon as it is used in commerce. That means that as soon as you start selling a product or service, you can claim common law ownership of that trademark without formally registering it with the U.S. Patent and Trademark Office (USPTO).
However, these common law rights are limited to the particular geographic location where the mark is used, and will offer limited help in court should you want to challenge someone’s use of the same or similar name. As a result, it’s typically best for a business to lock up their trademark rights for their company name as soon as possible.
In many cases, a business will want to start the trademark application as soon as their LLC or corporation paperwork is filed. By filing for a trademark prior to launch, you can be sure that your name is protected once you begin commercial sales. However, there may be an even stronger reason to apply early.
Comprehensive Trademark Search
Your application for a trademark is typically accompanied by a comprehensive trademark and name search. This means that you will search the USPTO database, as well as local and state databases, to ensure that your proposed name isn’t already in use by somebody else in a similar industry/field.
When you apply to be an LLC/corporation, the state will verify that your name is available within that state, but it doesn’t check to see what’s happening in the other 49 states. Unless you perform a comprehensive trademark search, you run the risk of accidentally infringing on someone else’s name.
If that happens, you can be ordered to stop using your name immediately, and all the hard work you put in to building your brand name in the market will fly out the window.
“Intent-to-Use” Trademark Applications
While it’s advisable to apply for a trademark as soon as possible, there is one catch. Having a trademark implies that your product or service is market-ready and the trademarked name is being used in interstate commerce (i.e. selling in more than one state).
But what happens when you’re not quite ready for market yet?
In this case, the USPTO lets you file an “intent-to-use” trademark application, which is exactly as it sounds. . .you plan on using the name in commerce in the near future.
Once the USPTO approves your intent-to-use application, you must start using the name in commerce within six months. Keep in mind it should take at least several months for the USPTO to process and approve your application.
If you are still not ready six months after approval, you can file for an extension. Then, you are allowed up to four additional six-month extensions. For each extension request, the USPTO wants to see “good cause” as to why your name has not yet been used in commerce.
The main advantage of filing an intent-to-use application is that your filing date will serve as the date of the first use, even if your product/service isn’t in the market yet. Your first-date use can be very important down the road in the event there’s a conflict with another business name.
In order for your intent-to-use filing to be successful, you must continue to request extensions on time, and ultimately use the name in commerce (start selling your product and service).
If you fail to use the name or request an extension, the USPTO will deem your application to be abandoned and cancel your application altogether. This means you will need to start the application process all over again, including paying the application fees a second time.
The Bottom Line
Your business’ brand is its livelihood. Do all that you can to protect yours by applying for trademark protection (either full trademark or intent-to-use) as soon as possible.
This ensures that you are not putting yourself at significant legal risk by using someone else’s name, in addition to being the most effective way to protect your own brand and name.