When to File a Trademark
Deciding when to file a trademark can be difficult. Many people choose to submit their trademark application as soon as possible, in part because the process takes so long. But should you register your business first? Use the mark in commerce before applying? Launch a marketing campaign before or after the bureaucratic dust settles?
Let’s go over what to consider when planning out your trademark timeline.
This article will cover:
Should I File My Trademark or Register My Business First?
Whether you should file for a trademark or register your business first depends largely on who the trademark owner will be. If your business will be the trademark’s owner, then business formation needs to come first. (After all, it’s hard for a nonexistent entity to hold property.)
But if you plan to own the trademark as an individual, the order in which things happens can be more fluid.
Either way, registering a federal trademark takes a long time. Though there are exceptions, trademarks usually take at least a full year to be approved by the United States Patent and Trademark Office (USPTO). So whether the owner of your trademark will be you or your business, the sooner you start the process, the sooner you can finish it.
Why does registering my trademark quickly matter?
Registering a trademark sooner rather than later matters because of how it impacts infringement:
- Earlier registration gets your trademark on the USPTO database sooner. This makes your mark easy to search, so there is a reduced risk of accidental infringement.
- Earlier registration can give you an advantage in an infringement case. Trademark law favors whoever used the mark in commerce first, and registration with the USPTO gives you tangible evidence of your start date.
Ready to get started? Our team of trademark experts are available to help when you sign up for Northwest’s Trademark Service.
Should I File My Trademark Before Making Sales?
Whether or not you submit your trademark application before you start selling your goods/services is entirely up to you. The USPTO doesn’t have a preference, and you’ll use the same application either way. The difference here is your filing basis.
- Selling before filing for registration: use in commerce filing basis
Filing under use in commerce means that, prior to submitting the trademark application, you were already selling goods/services in connection to your mark. Selling goods/services is a requirement of federal trademark registration—you cannot receive registration unless you’re regularly selling the things that the mark promotes.
- Filing for registration before selling: intent-to-use filing basis
Filing under intent-to-use means that you have not yet used the trademark in sales. This gets you an earlier filing date which could give you a better case against infringement. However, since selling goods/services with the mark is a requirement for registration, proving use requires additional paperwork and fees down the line. Intent-to-use applications take longer to process than use in commerce applications.
Are there any instances where I should wait to register my trademark?
You might be better off waiting to submit a trademark application if you’re about to launch your product or service but you haven’t yet.
Since the intent-to-use filing basis requires additional paperwork and fees, it’s helpful if you’re going to take months to start selling. If you’re planning on using your trademark in commerce within a few days or weeks, it might make more logistical and financial sense for you to wait and apply later with the use in commerce filing basis.
Should I File for a Trademark Before Marketing?
On the one hand, registering your trademark prior to using it in marketing materials means waiting a long time to start marketing. On the other hand, using your trademark in a marketing campaign before you register means you might have to throw it all out and start from scratch (or forgo the dream of federal registration) if your trademark is denied.
Basically, there’s no right answer. (Don’t you love to hear that?)
Consider what is more important to you: the confidence that the mark belongs to you or the jump-start on letting potential customers know about your offerings sooner.
Does my trademark’s purpose impact when to file?
Depending on what the purpose of your trademark is and what it protects, you might have different things to consider when choosing a filing date. Trademarks commonly protect business names, logos, slogans, and product lines. Here’s what to consider regarding these different purposes and your trademark filing timeline:
- Trademarking a Business Name
If you’re trademarking your business name, consider how important a name is to a brand. Your business name is one of the most difficult things to re-brand after launching. Filing a trademark application for the business’ name as early as possible gives many business owners peace of mind.
- Trademarking a Logo or Slogan
If your purpose in registering your trademark is to safeguard your logo or slogan, there is less risk of confusing your customers if your branding needs to change. Logos and slogans often evolve in a business, and re-branding comes with significantly less market impact than changing your business name.
- Trademarking a New Product Line
If you want to register a trademark to use for a new product line, you might have more flexibility around when to file. Typically, businesses start planning new product lines many months in advance, giving you time to conduct thorough research on the mark’s availability and apply for registration prior to launch.
How can I make marketing with an unregistered trademark safer?
The best way to market with an unregistered trademark is to do the grunt work. This means lots of research and maybe even hiring a trademark attorney to confirm your trademark’s good to go.
You’ll have a few protections as a common law trademark. One of the best ways to keep those protections strong and ensure you’re not infringing is to conduct a thorough trademark clearance search prior to marketing.
The USPTO’s Trademark Search tool and Official Gazette allow you to search for marks similar to your own. You may also want to search things like state trademark databases, state business registries, social media, and domain registries. If you discover any trademarks that are close enough to yours in image, meaning, or sound and goods or services to cause likelihood of confusion, you may need to go back to the drawing board.
When to File a Trademark FAQs
If you do not file for federal trademark registration, your trademark will not have guaranteed nationwide protection. Your rights will be geographically narrow, you won’t be able to use the ® symbol, and you may not have exclusive ownership of your trademark. This could also lower your ability to win an infringement case because there will be no federal paperwork to endorse your claim that you used the mark in commerce first.
Even without USPTO registration, your trademark has some protections. For example, you can file for trademark registration with your state, which offers protections to your state borders, or you can forgo registration altogether and have common law protections. Common law trademarks earn rights simply by being used in commerce. The rights extend only as far as your business presence.
Yes. A trademark application can be submitted with an intent-to-use filing basis prior to selling.
No. You can start the trademark application process by filing as intent-to-use, but the process can’t be completed—and you can’t receive registration—until you are actually using the mark in commerce.
Yes. Though complicated and time consuming, trademark applications can be filed without attorney assistance by anyone domiciled within the U.S.
If you do not have a domicile address in the U.S., you will need an attorney to help file your application.
Trademark renewals are due on a set timeline. To keep your trademark active, you must file a Declaration of Use and/or Excusable Nonuse under section 8 between the fifth and sixth year after your registration. Between the ninth and tenth year after registration and every ten years after that, you need to file the combined Declaration of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9.
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*This is informational commentary, not advice. This information is intended strictly for informational purposes and does not constitute legal advice or a substitute for legal counsel. This information is not intended to create, nor does your receipt, viewing, or use of it constitute, an attorney-client relationship. More information is available in our Terms of Service.
