So, when should you file for your Trademark Application? Well, I ran across an answer to this question earlier today. And it was by an attorney, and it was Wrong! In that particular answer, it was said to file for a Trademark Application “As soon as you can.” Well, doggone it! Filing a Trademark Application is the third step in a five-step process. It neglected to mention altogether that you need to do a Trademark Search first. 

So, specifically if you rush in and file for a Trademark Application without doing a search first, you could be filing an application, which by the way is public and discloses to the world that you’re using a mark potentially – you’re probably using it already, and you’ve put your competitors I notice including competitors that already have registered trademarks. 

So, a specific example, I have a client. They have a registered Trademark (it was registered over 5 years ago) And one of their competitors filed for a similar mark (we discovered it by the way) There’s a Trademark Monitoring service we use. And every Sunday night I get a report that informs me, so I can inform my clients about marks that have been filed that are similar to my clients marks. Well, we discovered that this particular competitor not only have filed for a Trademark Application, they’re actually already using this mark and it turns out Little Rock, Arkansas. So, of course, we sent them a Cease and Desist Letter. The next week, they ended up abandoning the application and abandoning the mark. Well, that particular company (a small company) spent thousands of dollars in legal expenses and marketing expenses and probably most importantly Goodwill, and they ended up having to abandon it all because they just didn’t do the steps properly.

So when should you fall for a trademark application? Well, when you choose to do so following a search, boils down to two categories of considerations. The first category are (1) Business Considerations. The second category are (2) Legal Considerations. 

As far as business considerations go, when you go ahead and you file for your Trademark Application, you start a clock ticking toward examination and eventually registration. And so, whether or not you’re actually using the mark yet, you’re going to actually be in line for an allowance faster by going ahead and “filing it now.” In addition, you’re able to lock in contracts because you actually have something tangible that you can refer to. So, if you’re selling your business and you’re trying to sell the Trademark and the Goodwill associated with it, you can make that part of your contract more real by having a Federally-Registered Trademark.

And of course, it begins with the application pending phase. A third reason why you might want to file for your Trademark now is because that gives you more certainty regarding your marketing materials, and it gives the people that are creating those materials something to refer to, and of course to use that wonderful circle R with. So, marketing becomes a little bit more real when there is a Trademark Registration on its way. And in that vein, having a Trademark Application on file creates clarity of action. 

Frequently in businesses and teams and marketing departments, there will be personalities that are kind of vocal about one mark over another or a logo over another. However, once that particular mark that you’re choosing – that logo you’re choosing is the subject of a pending application. All of a sudden, all of these internal fights go away because the decision has been made and everybody has to get behind the promotion of that particular word, slogan, or logo. So, it creates clarity of action. 

Now, why would you want to wait to file for a mark in terms of your Business Considerations? Well, if you’re not yet using the mark in commerce, you might have a reason to wait if that use in commerce is imminent because a Used-based Registration is a little bit less expensive. 

So, there’s two kinds of registrations/applications: One is called an (1) Intent-to-Use Application (if you’re not already using the mark in commerce). The other is an (2) Actual Used-based Registration (if you’re already using the mark in commerce). 

Most of the people that give me a call are actually using their mark in commerce already. So, depending on your specific situation, call your attorney or call us, and we’ll help you work through that decision. Now, regarding the legal factors to file now versus waiting, if you go ahead and you file now legally, you’re lowering your exposure to new competitors. So, while you’re waiting to file for your registration, if competitors pop up in other geographical areas and begin using a mark similar to the one that you want to protect, well they’re gaining Common Law Rights in those areas. And by having a Federal Registration on file, you can limit their ability to grow geographically. 

Now, why might you want to wait to file for a Trademark Application? Well, this goes back to what we were discussing at the beginning. If you haven’t done a search and you’re unclear about what your rights are and what your exposures are, you want to wait until you have clarity about that, so you don’t get sued. And even if you’re not sued, just getting the Cease and Desist Letter and having to abandon the name that you’ve selected and worked on for a while, it’s going to be disappointing, but at least it won’t be devastating. 

So, your exposure to existing competitors is why you don’t want to file for a Trademark Application right off the bat. Like I said at the beginning, consider this the third step in a five-step process proceeded with: Educating yourself and then going ahead and Evaluating what the market is by doing the appropriate searches. And then after you’ve done the searches and you’ve evaluated what your rights and exposures are, then you go ahead and file.

Now, you want to get there as fast as you can but just don’t go running off the diving board and diving into the pool without knowing how deep the water is because you might get hurt.