Someone asked me yesterday, “When is the best time to register my trademark?” and the answer is generally, as soon as possible. If you know you’re going to be using a certain trademark, you’ll first want to get a trademark clearance search to make sure it’s available, and then apply to register it as soon as you can do so. This is so that someone else doesn’t start using your desired trademark before your business is ready to launch.
While trademark rights are only acquired through use of the mark in commerce, one can apply to register the mark before use has begun. We have two bases for registration: Use, and Intent-to-Use. When a trademark is filed based on use of the mark in commerce, the applicant must show this use to the trademark office at the time of the application, and state the date of first use — that is the date the applicant first began offering the goods and/or services in conjunction with the sale or offer for sale of the goods and/or services.
When a trademark application is filed based on the applicant’s intent to use the trademark in commerce in the future, the applicant doesn’t need to show the proposed use on the application, but he or she does need to declare what goods and services will be associated with the trademark, and swear that the applicant has a bona-fide intent to use the mark in commerce for the goods or services listed in the application.
The trademark application is then evaluated based on the usual factors that would bar registration of a trademark — considering things like whether or not it is “confusingly similar” to a trademark already applied for or registered, whether it is “merely descriptive” of the goods, or any number of other reasons that might be used to reject a trademark application. If the mark passes this hurdle, it is then published for opposition, and if there are no opposers, then a Notice of Allowance is issued to the Applicant.
Once the Notice of Allowance is issued, then within 3 years of the date of that Notice, the Applicant has up to 3 years to show his or her actual use of the mark in commerce. The first deadline comes 6 months after the Notice of Allowance, and the Applicant can either 1) prove use at the 6-month mark, or 2) file an Extension to File A Statement Of Use. Unsurprisingly, there are fees for both of these things.
The requirement for showing use in conjunction with the mark is the same for Intent-To-Use trademark applications as for Use applications. The applicant has to demonstrate how the mark is being used in commerce with the goods or services. No trademark application initiated based on use or intent-to-use can issue without showing proof of the use of the mark in commerce that Congress can regulate.
The big upside that the Applicant gets by filing the trademark application based on an intent to use is that if you’ve not yet begun use, you avoid the risk that someone else may, between the time you conceive of the brand and the time you file the trademark, file their own trademark application, thereby completely eliminating your opportunity to acquire the trademark. Even if that person starts their use before the Applicant, the Application date is the date that sets Applicant’s priority date for the mark. Even if someone else actually uses the trademark before the Applicant starts his or her use, the Applicant has superior rights to the mark as of the Application date.
In short, there are significant benefits to filing your trademark application as soon as you know what trademark you’d like to use for your goods and services. The only downside is the extra cost — potentially a few hundred dollars — in order to prove use later when the Statement of Use is filed.
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Contact Dallas, Texas trademark attorney Angela Langlotz today to get started on a trademark application for your valuable brand.