When is the right time to file a trademark application?

A trademark is a sign that identifies and distinguishes the goods or services of one business from those of others. Trademarks can be words, logos, slogans, colors, shapes, sounds, or even smells. Trademarks are valuable assets for businesses, as they help to build brand recognition and loyalty among consumers.

But when should you file a US trademark application to protect your brand name or logo? The answer depends on several factors, such as your business goals, your market strategy, your budget, and the legal requirements of the US trademark system.

one hand on top of the other, clasping a watch as if to read the time

A trademark is a sign that identifies and distinguishes the goods or services of one business from those of others. Trademarks can be words, logos, slogans, colors, shapes, sounds, or even smells. Trademarks are valuable assets for businesses, as they help to build brand recognition and loyalty among consumers.

But when should you file a US trademark application to protect your brand name or logo? The answer depends on several factors, such as your business goals, your market strategy, your budget, and the legal requirements of the US trademark system.

Factors to consider before filing a trademark application

To determine the appropriate time to file a trademark application, the following elements should be considered:

  • The filing basis of your application. In the US, you can file a trademark application based on different grounds, such as:

    • Section 1(a): You are currently using your trademark in commerce with your goods and/or services.

    • Section 1(b): You have a bona fide intention to use your trademark in commerce with your goods and/or services in the near future.

    • Section 44(d): You own an earlier-filed foreign application that was filed within six months of your US application for the same trademark and the same goods and/or services.

    • Section 44(e): You own a foreign registration of the same trademark for the same goods and/or services from your country of origin.

    • Section 66(a): Your application is based on a filing under the Madrid Protocol, a filing treaty that ensures protection of trademarks in multiple countries1.

  • The use requirement of your trademark. In the US, you must use your trademark in commerce to obtain and maintain your registration. If you file your application based on Section 1(a), you must submit proof of use with your application. If you file your application based on Section 1(b), you must submit proof of use within six months of the date the mark is approved for registration by the USPTO (or request an extension of time). If you file your application based on Section 44(d), Section 44(e), or Section 66(a), you do not need to submit proof of use with your application, but you must use your mark within three years of registration or it may be cancelled for non-use.

  • The time taken to register your trademark. The US trademark registration process can vary widely depending on the complexity of your mark and the potential issues that may arise during examination or opposition. The process usually takes 12 to 18 months, but it can take longer if there are any office actions, oppositions, or appeals. Therefore, you should plan ahead and file your application well in advance of your expected launch date or market entry.

  • The risk of third-party oppositions or objections during the examination or registration process. When you file a US trademark application, it will be examined by an examining trademark attorney who will check whether your mark meets the legal requirements for registration and whether it conflicts with any prior registered or pending marks. If the examiner finds any issues with your mark, he or she will issue an office action that requires you to respond within six months. If you fail to respond or overcome the issues raised by the examiner, your application may be rejected. Additionally, after your mark is approved by the examiner, it will be published for opposition by third parties who may claim that your mark infringes their rights or is otherwise ineligible for registration. If anyone files an opposition against your mark within 30 days (or requests an extension of time), you will have to defend your mark before the Trademark Trial and Appeal Board (TTAB) or a court. If you lose the opposition, your mark may be refused registration or cancelled.

Benefits of filing a trademark application early

Given these factors, it may be advisable to file a US trademark application as early as possible in order to:

Secure priority rights over later applicants.

In the US, trademark rights are based on a first-to-use system. This means that whoever uses a mark first in commerce has priority over others who use a similar mark later for similar goods or services. However, filing a trademark application can also establish constructive use and priority over later users who are not aware of your mark. By filing a trademark application early, you can secure your priority date and prevent others from registering or using confusingly similar marks that may dilute or damage your brand reputation.

Avoid costly and time-consuming disputes with third parties. 

Filing a trademark application early, can can also help you to avoid potential conflicts with third parties who may have otherwise registered or used similar marks before you had you postponed your filing. If you file your application after someone else has already registered or used a similar mark, you may face oppositions, objections, or even lawsuits that may delay or prevent your registration or use of your mark. These disputes can be costly and time-consuming to resolve and may harm your business reputation and goodwill.

Expand your market presence and opportunities. 

By filing a trademark application early, you can also expand your market presence and opportunities. A US trademark registration can help you to enter the US market, attract new customers, and create new partnerships. It can also help you to register your mark in other countries under the Madrid Protocol, a filing treaty that ensures protection of trademarks in multiple countries. And a registered trademark can also help you to license or franchise your mark to others, generate revenue from royalties, and enhance the value of your business.

Conclusion

Filing a US trademark application is an important step in protecting your brand name or logo in the US market. However, there is no one-size-fits-all answer as to when the right time to file a trademark application is. It really comes down to your particular situation. You should consider various factors, such as your filing basis, your use requirement, your time frame, and your risk of opposition. If you need specific advice as to the best course of action for you and your trademarks, contact us today to schedule a free attorney consultation.