When Is the Right Time to Trademark Your Brand?

When Is the Right Time to Trademark Your Brand?

by Jane Haskins, Esq., June 2017

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A strong trademark helps you establish a successful brand that stands out from the competition. But many small business owners don't even think about trademark protection until after they've been in business for months, or even years.

This approach can backfire in a big way. While it's true that you can apply for federal trademark protection at any time, there's no guarantee your trademark will be approved for registration, even if you've spent a lot of time and money building your brand.

The best strategy is to think about trademarks from the very beginning—ideally, when you're choosing your business name and logo and forming your business entity.

How Trademark Searches Help You Establish a Strong Brand

Your business name can form the core of your brand, and it can also create serious trademark issues.

If you choose a name that's too similar to an existing trademark, you may be unable to register your trademark with the U.S. Patent and Trademark Office (USPTO). The other trademark owner may threaten a lawsuit if you continue to use the name. Then, to resolve these issues, you may have to change your brand name. This means losing your name recognition and potentially spending tens of thousands of dollars on new signs, labels, marketing campaigns, and everything else you'll need to rebrand your business.

The best way to avoid this is to do a trademark search before you commit to a name and spend money marketing it. A comprehensive trademark search will tell you whether there are any “confusingly similar" trademarks that might pose problems.

As the phrase suggests, a “confusingly similar" business name has the potential to confuse customers because it looks or sounds like your name, and it's used on goods or services related to the ones you offer. For example, Delta sinks and Delta faucets are probably confusingly similar because sinks and faucets are related. But Delta faucets and Delta airlines are not.

Deciding Whether to Register Your Trademark

You don't have to register your trademark with the USPTO in order to have some trademark protection. Unregistered marks may have “common law" protection in your immediate locality, or you may be able to register with your state for statewide protection.

But neither of these are nearly as strong as a federal trademark, which extends nationwide and paves the way for foreign registrations. A federal registered trademark also allows you to file a trademark infringement lawsuit in federal court and register with U.S. Customs and Border Protection to block imports of infringing goods.

Registering a Trademark Before You Use It

In general, you must use a trademark in your business in order to have trademark rights.

But the USPTO offers a way for businesses to preserve their right to use a trademark in the future. When you file a trademark registration application, you must either apply based on “use in commerce" of your trademark, or “intent to use." When you file on an “intent to use" basis, it means you aren't using your trademark yet, but plan to use it in the near future.

No matter what filing basis you choose, the USPTO will process your application, check for conflicting marks, notify you of issues to be resolved, and hold a public opposition period. If you file on an “intent to use" basis, then, once these hurdles are cleared, you will receive a Notice of Allowance (NOA)—sort of a conditional approval. You will need to begin using your trademark and submit additional paperwork to complete the federal registration process.

Applying early on an “intent to use" basis means you don't risk having another business register a similar trademark while you are busy getting yours off the ground.

If you're already in business and thinking about trademarks for the first time, you can still do a trademark search and apply for the expanded protections of federal trademark registration. But when it comes to protecting your trademarks, the sooner you begin thinking about protection, the better.