Written By: Lawrence A. Maxham
Part 3 of our Should Your Register Your Trademark? series will take a look at the importance of filing for registration of your trademark as soon as possible. It is imperative that you register your trademark as soon as you have chosen your mark, have had a professional search done and the results professionally evaluated (see Part 1 of this series for more information), and the search shows that there is no clear conflict with any prior mark. All of the above steps are set out to potentially avoid the following situation many clients have found themselves in.
Business A has an idea for new goods or services that they believe will be profitable. After they have decided on a trademark they proceeded to do some background research on their own to see if it is viable. After such efforts they have made the determination that they are able to use their mark. They have forgone a professional search.
Having not consulted with an experienced trademark attorney they may not be aware of the basic US law that the first person to use a trademark has rights that are superior to later users of conflicting marks. The same is true if another company has already filed to register a confusingly similar mark. Some time passes and the Business A managers figure they will build their brand and file to register their trademark when it is more convenient or their mark is more established.
Meanwhile, ABC Corporation has adopted and has filed to register their similar trademark. Not long after, Business A has finally decided to attempt to register their trademark. However, because ABC Corporation has filed first, their mark is cited by the United States Patent and Trademark (USPTO) as a basis for refusing to accept Business A’s mark for registration.
This leaves Business A with two options 1) appeal the USPTO decision at high cost and with an unknown result, or 2) start from scratch with a new mark. Both options are costly and can normally be avoided with the guidance of an experienced attorney.
If, after your research and, preferably, a professional search and analysis, you are satisfied that you have the right to use your newly adopted trademark, you should file to register the mark as quickly as possible. That way, if anyone who files to register a confusingly similar mark after you, your application is in a superior position.
The benefits are obvious; you would not have to spend time rebranding and expend extra investments in time and money trying to establish the right to use your mark since you would have the priority filing date.
Simply put, by opting to invest in your company’s intellectual property (IP) early on, you have a good chance of avoiding the pitfalls of Business A as set out above, which not only saves you money but also protects your well-earned goodwill.
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