When Should I Register a Trademark?

A common question for entrepreneurs and small businesses is, “When should I register a trademark?”

Let’s look at 5 key points to consider. 

1. First, you should register for a federal trademark when you want to protect the GOOD WILL of your brand. 

Small business owners spend hard-earned money building a brand.  

By registering your trademark with the United States Patent and Trademark Office, you can protect your company’s goodwill from potential infringers.  Specifically, you can bring a lawsuit for trademark infringement into federal court.  Or, you can send a cease and desist letter, indicating that you have the federal rights to your trademark. 

By not protecting themselves with a federal trademark, you risk OTHER companies using a trademark that is identical or highly similar to yours.  In certain instances, other companies may argue that you are infringing on their trademark rights, especially if they file for a federal trademark before you do. 

Federal trademark registration allows broad protection for your trademark across the entire United States.

So, you should first consider whether there is a trademark – whether it be a company’s name, an expression, or even a logo – that you believe promotes — or will one day establish —  brand value.  

If you believe that a word or a logo does or will be important for brand value, you should strongly consider federal trademark protection.  

This brings us to the second consideration…

2. Once you decide that you want a trademark, when should you register?

Well, there are two ways to register your trademark: 

When you already are selling products or providing services with the trademark OR When you intend to sell products or provide services with the trademark.

The first option means you’ve already begun using the trademark with your products or services.  For example, you may have already sold t-shirts or provided bakery services with that trademark.

The second option means you have a bona fide intent to sell a product or provide services with a trademark.  This means you are making a sworn statement that you have a true intent to use this trademark to sell products or provide services with a trademark.  

The Third Key Point? 

3. You’ll want to file as soon as possible, even if you are not already using the trademark!

Let’s say you are planning to use a trademark, but are not yet selling or providing the products or services.  If you apply for a federal trademark under a 1(b) basis, you can get the priority date of the date you submitted your application!  This priority date is important because it is nationwide in effect, and provides notice to others about the rights to your trademark.

So, let’s say you filed a 1(b) trademark application on January 1^st.  You’ll eventually provide evidence to the USPTO that you are using your trademark in business, but you won’t have to provide that evidence in your initial application.  Then, let’s say you start using your trademark in business on June 1, and submit proof to the USPTO on June 1^st.  Then, your trademark is registered on the Principal Register on August 1.^st.  When your trademark registers, legally your trademark will be treated as if you had used your trademark in business on January 1^st!  

Let’s also use an example of how this date establishes your priority to the legal rights to your trademark.

Suppose on January 1^st you filed the trademark MOONSTRUCKY for balloons as a 1(b) application.  If another company, on January 2, starts using that same trademark with similar goods, you will have priority to the rights of that trademark when it registers on the Principal Register with that January 1^st priority date.   So, even though you weren’t actually selling your balloons with your trademark on January 1^st, the law will still treat it as if you were for priority purposes!

The Fourth Key Point? 

4. You should file for a trademark after conducting your due diligence.

You want to conduct due diligence before spending money on a federal registration.  For instance, the USPTO has a database that lets you search for similar pending or registered trademarks.  We also have a video on how to search for direct hits.  While a direct hit search isn’t exhaustive, it will provide you with any clear examples of similar trademarks. 

Video 5 teaches you how to do a direct hit search on the USPTO database. 

By conducting due diligence, you develop a better understanding of whether your mark will be registered by the USPTO.  

The Fifth Key Point? 

5. File after making a business (and personal) decision.

Filing for a trademark is a business, legal, and personal decision.  It involves weighing the potential legal and business risks of not filing for a trademark and the impact of not doing so on your brand value.  

Ultimately, you want to think a great deal about the brand of your business, and spend considerable thought on what names, logos, or designs, you want associated with that brand.  

Maybe you hire an artist to help you with a certain logo, or workshop names for a company with friends, family, and even focus groups.  

Remember that this trademark is a long-term decision.  You want to make sure you love this name or logo!

Jimmy McNamara is an attorney and founder of TrademarkEd, LLC, an educational platform for all stages of the federal trademark application process. Learn more at www.mytrademarked.com.

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