What’s the “right” time to register a trademark?
This is a trick question, isn’t it? Typically, trademark registration tends to be one of the top 10 items to cross off an entrepreneur’s legal to-do list. Entrepreneurs often have unique words, phrases, symbols, designs and logos associated with their small businesses. These are known as trademarks. This kind of intellectual property helps differentiate the business from its competition and emphasize what makes it original to the world. Trademarks are creative assets, so naturally we recommend protecting them as soon as possible by filing an application to register the trademark.
What happens if you have established a mark, but don’t want to use it until a later date? Do you still need to file a trademark registration right now, or can you afford to wait? Let’s take a look at the options available to entrepreneurs.
You have a trademark, but do not plan to use it until a later date
Imagine you have a small business that specializes in making jewelry. That business has a long-term plan to open a brick-and-mortar storefront where it can sell its products. The company’s trademarks, including its name, logo design and taglines, will be clearly visible throughout the store and used on displays and product packaging.
However, the plan to open up a storefront is still in its earliest planning stages. You will do it soon, but not yet. For now, you’re not opening a store. You’re also not selling jewelry anywhere else. Your focus is largely on designing the pieces. You may even still be writing out portions of your business plan.
Eventually, you will sell your jewelry online and in a store. This is where the United States Patent and Trademark Office (USPTO) advises that entrepreneurs file an “intent-to-use” trademark application. In order to file this application, applicants must specify their “basis” for filing. Generally, the basis is that they are already using the mark in commerce or intend to use it in the future in commerce.
Can entrepreneurs file on any other basis besides an intent-to-use basis? Yes! They may also file the trademark to use in commerce under bona fide intent. This means that the mark may not be market-ready just yet, but is more than an idea. Additional materials, like a business plan and samples of products, may be used to back up your basis to file based on bona fide intent.
You have a trademark, and want to start using it as soon as possible
This recommendation shouldn’t come as too much of a surprise: File a trademark application as soon as you are able. You may even decide on an early filing basis to protect and defend the mark.
If you want to begin using the trademark for your small business and selling its jewelry products quickly, the mark is vulnerable because it is unregistered. An unregistered trademark may be plagiarized by competing businesses. This means your mark is no longer considered unique in the market. Some companies may even copycat it for themselves and register the mark. This ensures you no longer have exclusive rights to the creative asset — and may even be accused of infringing on the mark if you claim you created it first.
Before filing an application to register a trademark, it’s important that you conduct a trademark search first. Never presume that someone else hasn’t created a similar image or phrase first! You can work with a third party filing services company like MyCorporation, a Deluxe Company, for all of your trademark search service needs. We assist entrepreneurs in searching through trademark applications that are currently registered and pending. Has someone else already registered the mark or has a pending application? You may want to head back to the drawing board and brainstorm some new names or designs for the business.
If nothing similar or exactly like your mark has been registered, guess what? Your trademark is considered unique and eligible for registration! Once again, you can work with the professionals at MyCorporation to file your application and ensure the filing process is quick, simple and saves on time and money for your small business. Once you have applied for a trademark, we also provide a trademark monitoring service. This allows us to “watch” over the mark in the trademark database and make sure there are no other registrations that may conflict with your mark.
You have a trademark that is already in use
So, you already started using your trademark for the jewelry business. That’s okay! You probably have the name of the business and its logo on price tags for necklaces and bracelets, or have labels featured on packaging materials. There’s still time to protect your mark.
As opposed to filing an intent-to-use application, which states an intention to eventually use the trademark in the future, entrepreneurs must file a “use-in-commerce” trademark application. Use-in-commerce means that you have already started using the trademark in commerce with items listed in your application. Some of these items may include the aforementioned visible tags on items of jewelry and labels on various packaging and wraps. According to the USPTO, the mark must appear on its goods in order to be considered eligible for use-in-commerce and used in the sale or transport of goods in interstate commerce.
What is the “best” time to register a trademark?
As you can see, we’ve outlined each possible moment where a trademark may be registered for a business. You can file before you start using the mark, while you’re actually using it, and for use in the future.
It all depends on where you’re at with your business, but really there’s no “wrong” time to file for trademark protection. The worst thing an entrepreneur can do is not file for a trademark at all. Registering a trademark is an investment in your business and yourself. You, and only you, have exclusive rights to the mark. It’s relatively inexpensive to maintain a trademark’s ownership. Best of all, federally registered trademarks never expire — as long as the company remains in business!