How Do I Know When It’s Time to File a Trademark?

For many entrepreneurs, it isn’t necessary to ask whether or not it’s time to file a trademark application. Most tend to do it as soon as possible, eager to protect the original mark that identifies their brand and differentiates it from the competition. But, there are those among us that put the process off a bit. Sometimes that’s because they plan to use the trademark — whether it’s a unique name, logo, design, or slogan — later, but not right now. Is it a smart move to make, or should entrepreneurs focus on protecting their trademark upfront?

If you decide to wait to register the mark…

Imagine that you have a jewelry shop, but have not yet opened your doors to the public or conducted any business yet. Your jewelry collection doesn’t even have a full inventory, but consists of sample pieces that are not meant to be for sale. You haven’t started using your trademark, but plan to do so…eventually.

The United States Patent and Trademark Office recommends filing based on bona fide intent. This essentially means that while the mark may not be quite market ready, it is more than just an idea. You can supplement the intent to use the mark by creating sample products and having a business plan. Prior to registration, if you have not used the mark at all (not even in your store) but intend to, you must file under “intent-to-use” basis.

If you are already using the mark…

Let’s go back to that jewelry shop for a moment. While you may carry sample pieces, your mark is kind of, uh, all over the store. The company logo can be seen on tags, the business name is featured on packaging, and there are store displays scattered around that have traces of your mark somewhere on them that advertise your products. Don’t be alarmed. While you’re technically already using the mark, you can still protect the trademark.

In order to establish your 'use-in-commerce' basis, you must provide the date of first use of the mark in commerce, along with the date the mark was first used anywhere else.

The USPTO recommends filing under “use-in-commerce” basis. This means that you have already started the mark in commerce with the goods listed in your application. However, it’s not enough to take your word for it. In order to establish your “use-in-commerce” basis, you must provide the date of first use of the mark in commerce, along with the date the mark was first used anywhere else. A specimen must also be included to show how the mark is being used in commerce. It sounds a little technical, but don’t worry. Your “specimen” for goods can be the aforementioned tag or packaging, so long as it’s a sample of the mark as it actually appears on your goods.

There’s also a third option to filing a trademark and that’s the traditional approach of filing before it has been used with the intention to use it quickly. If that sounds like your situation, and you have a particularly unique mark, the best thing to do is protect it early. Remember to conduct a name search first to make sure your idea is original and isn’t pending for another business. Once you have that confirmed, you can start the filing process and register your trademark.

Have any other questions about trademarks? Let us know in the comments!