We are often asked by our startup clients when is the right time to trademark a business name. The short answer is that you should file for trademark protection as soon as possible. The only caveat is that your trademark should be filed only after your business entity has been formed. Other than that, filing a trademark early-on is advantageous. Here’s why.
Avoid Time, Energy and Money Waste: Protect Your Trademark Early.
1. You May be Committing Trademark Infringement
How frustrating would it be to invest your time, energy and money into a brand name only to find out that it is not protectable or even worse infringing another business’ trademark? This is the situation many founders find themselves into when they’ve waited too long to protect their trademark.
The longer you wait to file a trademark, the higher the chance that somebody else will file a trademark application for that mark.
If another company in your field has already filed for a trademark, it would be a bad idea to sink your time and energy to market that brand name because you will risk being sued for trademark infringement. This is not something you would want to find out after pouring hundreds of thousands of dollars into promoting your brand.
Your trademark attorney should complete a comprehensive trademark search before filing your trademark application. The result of the search should give you a good sense of whether it is worth it to invest in that brand name. If the search shows that others in your field have already filed for trademark protection for that same mark, it’s a sure sign that you should go back to the drawing board to find another brand name.
Without a trademark search, there’s simply no way to know whether (a) you are allowed to use that brand name without infringing on someone else’s trademark, and whether (b) you have a good chance to protect that trademark.
The trademark search should be completed BEFORE advertising your brand name to avoid wasting precious marketing dollars.
2. Some Brand Names Cannot Be Trademarked
It would be a mistake to assume that your brand name is necessarily eligible for a trademark registration. Some brand names are better than others for trademark purposes. You can found more information on what makes a brand a good trademark here. This post will give you a good sense of which type of trademarks can be protected via a trademark registration, and which can’t.
3. The Senior Rights of the Prior Users
Your brand name may already be used by another company. Even if that company is using it in commerce without a trademark registration, they still have some trademark rights.
This issue creates a lot of confusion because the federal trademark registration system is not a straight forward first-to-file system: It’s not always enough to be the first to file a trademark application to obtain priority for that mark.
Having your trademark attorney complete a comprehensive trademark search is the way to go to make sure there are no prior user of your brand name. Otherwise, you risk accidentally infringing the trademark of others, at worse, or having to discontinue using that mark down the line, at best.
4. Using Your Trademark Without a Trademark Registration is Not Sufficient
While you gain some trademark rights by virtue of simply using your brand name in commerce, this kind of common law trademark rights can only take you so far. The reason is that there is a policy of rewarding those who first seek trademark registration, and there is “no bias in favor of the prior user.”
If you use your brand name first and another company registers a trademark to that name before you, your prior use by itself will not prevent their trademark from registering. Worst, five years after obtaining their trademark registration, your trademark rights may become “frozen”: limited to that geographic area in which you were doing business as of their trademark registration date. This would prevent you from expanding your business beyond that limited territory.
Long story short, completing a trademark search and filing as early as possible is the best way to avoid all sorts of trademark troubles.
5. The Best Time to File and the Best Time to Use a Trademark
By filing for a trademark prior to launch, you can be sure that your brand name is protected once your company is ready to do business.
The best time to start using the trademark is a few months after your trademark application has been filed, once you receive a decision from the Trademark Office finding that there are no conflicting marks that would bar registration.
Trademark is a complex legal system that rewards those that diligently search, file and use their trademarks. And as Benjamin Franklin once said “diligence is the mother of good luck.”
If you have any questions about protecting your trademark or want to learn more about our trademark flat fee packages, please contact our office at (212) 729-8505.