When is the “Right Time” to File for Trademark Protection?
When you realize the importance of registering your mark and hiring a trademark attorney to guide you through the registration process— the next question small business owners often ask is when is the “right time” to file? The answer is, in true attorney style, there is no “right time” but there is a better time to file.
I love it when I have the opportunity to work with small business owners/clients when they are forming their businesses. If the business owner wants to register their business name, it would so helpful to start the process even before the legal entity or corporation is established. I believe this is the best time for business owners to consult with a trademark attorney. Ideally, it would be great if the lawyer and client could work together once the client has chosen a name for their business or product, and a logo. This way, the attorney can run a trademark search in relation to the logo or name of the business before the client spends their hard-earned money on marketing.
In this scenario, the trademark attorney can do a thorough search of the United States Patent and Trademark Office’s (“USPTO’”) database before the client starts using their mark in the sale of goods or services to make sure the mark is not already registered to another business. This is critical because oftentimes small business owners do not realize that they could be infringing on another brand. Spending time and money upfront helps to save money for the client down the line because defending a trademark infringement suit is time-consuming and costly. Also, rebranding is a very expensive process.
If the trademark attorney gives the client a green light to go ahead with the registration of their mark, the attorney can help the client file an intent to use application with USPTO. This simply means that the client is not or cannot prove that they are using their mark to sell goods and services in commerce now, but the client intends to do so. Once the client’s mark is registered, the client can launch their product or services with greater confidence that there will be no confusion between their mark and another registered user in the United States. At this point, an attorney could also help the client legally form their business under state law.
The trademark attorney will apply using the intent to use the application, and once the client is actually using the mark, the attorney will file a statement of use with USPTO. The attorney and client will work together on this process to demonstrate how the client is using their goods or services.
If your business is already thriving and selling goods or services, it is not too late to consult a trademark attorney. Give us a call and we will help to answer your registration questions. Since you are already using your mark in commerce, you may have common law rights that can protect you.
