The following is an edited transcript of my video, When Is the Right Time to Register a Trademark?
I was recently asked, “When is the best time to apply for trademark registration?” Of course, every situation is unique and if you have a particular trademark situation or question, you should consult an attorney. But it is pretty safe to say that it is always better to file sooner rather than later. There are very few circumstances when that would not be the case.
You do not have to be making commercial use of the trademark at the time you file; you can file based on intent to use. I actually covered this topic in a couple of different ways in my recent book, Building a Bold Brand, available on Amazon, in a couple of different parts, but Chapter Nine is entitled “Registration, Better Late Than Never“.
The phrase “Better late than never” has been attributed to many, but some say it may have originated from Chaucer in The Canterbury Tales, circa 1386. Whether that’s true is anyone’s guess, but regardless of how many centuries it’s been part of our vernacular, better late than never certainly rings true with trademark protection and registration.
Ideally, a business should protect its trademarks from the outset, filing as the brand launches or even earlier based on an intent to use the trademark. However, if that opportunity passed, it is still tremendously valuable to seek registration of a trademark, whether it has been in use for one year, five years, 10 years, or for however long because having the trademark registered prior to a future infringement possibility or dispute is really the key. Once a dispute happens, you can wish you had the registration, but you can’t quickly get a registration: the process takes about a year on average. So it’s too late to wait for a situation to arise to then seek the registration. It’s much more effective and useful if you do it proactively.
Why is registering a trademark important, whether it’s before a brand launches or years after? Because appearing in the USPTO database could prevent future brands from adopting a similar name at any time. Because blocking domain names or social media names could always be useful, especially as new ones are introduced. And finally, because a trademark registration creates a valuable, tangible asset that can be transferred or used as a security interest.
That’s one of the ways I cover the timing of trademark protection in Building a Bold Brand. I also talk about intent to use applications, about clearing a mark upfront, about why your registration is so valuable if you do find yourself in a dispute. There are many other chapters in the book full of valuable trademark content and wisdom based on my 20 years of experience. If you’ve read the book, I’d love to know what you think. Leave a review, send me a comment, or send me an email.