When Should I File a Trademark Application?

April 18, 2021

As a new business owner entering the industry, you might be among those asking the following questions; when is the appropriate time to file a trademark?

Are you supposed to register your trademark before your product or service hits the market or should you wait until you’re ready to launch your product or service into the marketplace?

These and many more questions are what we will be addressing in this article to equip you and help you make informed decisions.

So, when is the appropriate time to file a trademark application?

When it comes to the timing of trademark registration, there is no timeframe set aside for you to register your trademark.

Unlike a patent that has a deadline, trademark registration can be done at any time.

However, even though there is no set-aside timeframe to register your trademark, delay can also have some negative consequences. 

You need to file your trademark application quickly before someone else does because there are over 7 billion people on Earth so you could have the same idea like so many others.

So, whoever registers first wins the legal battle which is the more reason you should file your trademark application as soon as possible.

To ascertain the best timing for your trademark application, we’ll take you through some factors to keep you better informed.

When is the right time to trademark a company name and product name?

The right time to trademark your company name should be before it’s incorporated. Whereas for the product name; it all depends on when you plan to launch the product or service to the marketplace.

However, if you have already started to sell the product or offer the service under the name, then you need to quickly file a use-based trademark application so no one beats you to it.

Furthermore, if you’ve started selling your product or rendering your service, you may not want to wait until you’re ready to launch. Trademark applications are examined on a first to file basis.  This means that you want to be first in line.  If you don’t file your trademark application and someone files for a similar mark, you’ll likely not be first in line and your application could be refused.

However, there is a catch.

As you continue to delay, there is a huge possibility that a third party could beat you to the trademark registration of what you have in mind which will surely be disastrous to your branding.

So, if you know that in 6 months, you’ll be ready to launch your product or service; then you should file an intent to use a trademark (ITU) application to protect your name, logo or design.

What is an ITU application?

An ITU application allows you to apply for a trademark that hasn’t been used by anyone in commerce (buying and selling of goods and services) and get it reserved for your usage in the future.

How are trademark rights determined?

Trademark priority determines who owns trademark rights which are then given to the entity that first used the mark in commerce.

Notwithstanding, The Canadian Intellectual Property Office (CIPO) and The United States Patent Trademark Office (USPTO) review trademark applications om a first to file basis and give preference to whoever files first; which means that there are a lot of advantages when you’re the first to file for trademark registration.

There is more…

The applications that were filed earlier will be prioritized and worked on before subsequent ones. So, if your application came in last, your only option will be to oppose the trademarks that were filed before yours and show proof of why your application should displace theirs.

Under normal circumstances, whoever files first should be able to win any opposition who wants to oppose their legitimacy and the appeal process can take years to litigate with thousands of dollars budgeted.

This is why you need to file first and put yourself in the driver’s seat and leave the burden of proof to your opposition who files late.

Can I file before I start using a TM (trademark)?

You don’t need to file before you can use the trademark symbol. The TM symbol doesn’t have a legal meaning so it can be used on any mark your company uses regardless of registration.

So many companies use TM on their logo, new phrase, design or word that they plan to register.                                                                                    

Things to do after trademark registration

Congratulations on your newly registered trademark as you’ve become legitimate. However, this is the stage where a lot of people start asking what next.

Let’s begin with the three things you need to do after registering your trademark.

Make use of ® and not ™ or SM

As a registered business, you need to stop using SM or ™ symbols and start using the registered ® symbol because SM or ™ only indicate that you have claimed the trademark.

Whenever you see the registered symbol accompanying a brand name, just know that the business entity has applied for trademark registration and it was approved by the federal government.

Monitor the marketplace to stop infringements

Now that you have registered your trademark, there’ll be others who’ll want to undermine your authority by using your trademark without consent.

In the same vein, there’ll be others who will use trademarks similar to yours to cause confusion; it’s your responsibility to police the marketplace and get rid of all impostors and look alike.

Don’t fail to file for renewals

Another important component of trademark protection is for you to always file for renewal as at when due. A trademark registration is in effect for 10 years.  Renewal will be due 10 years after the Registration Date.  This date is important, and you may not get notification from CIPO or UPSTO to renew.  Trademark Depot will ensure your Renewal Date is docketed and remind you when it is coming due.

Conclusion

Are you ready to file your trademark application? If yes, you can leverage the expertise of renowned professionals at Trademark Depot (TMD) so USPTO doesn’t reject your application.

TMD consists of registered trademark agents, attorneys and paralegals who have all come together to help you secure your intellectual property.

Contact the experienced professionals at Trademark Depot (TMD) for a free trademark analysis.

 

Written by

Jamie Bashtanyk

CEO/Trademark Agent

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