When Should You Apply For A Trademark?

Your business name is without question one of the most important assets you’ll ever own. While protecting it by registering it with your state offers some peace of mind, securing a trademark provides even more protection.

One of the questions I often get from business owners who have decided to file for a trademark is, “When should I submit my application?”

Let’s dig into this topic by first getting an understanding of how the U.S. government determines rights to a business name.

Common Law Rights To Your Business Name

Here in the United States, your business gets common law rights to your name as soon as you start selling a product or service. Without formally registering your name with the U.S. Patent and Trademark Office (USPTO), you can claim common law ownership of that trademark if you are the first to use the mark in commerce.

Realize common law rights only apply to the particular geographic location where you’re using your mark. Also, common law holds only limited weight in court when challenging another business’s use of the same or similar name.

For those reasons, I suggest you consider formally registering for trademark rights as soon as possible.

Formally Registering Your Trademark To Protect Your Name

When applying for a trademark, you will typically need to do a comprehensive trademark and name search first. By searching the USPTO database and local and state databases, you can determine if your proposed name is not already in use by another business in a similar industry within your state or in the other 49 U.S. states. Having your trademark request granted largely depends on having a name that customers won’t confuse with your competitors’ brands.

Even if you don’t intend to file a trademark, using a name that has already been taken by another business could result in an order to stop using your name immediately. It pays to do a thorough search before conducting business under a name!

Back To The Issue Of Timing

I find many businesses want to start the trademark application as soon as they file their LLC or corporation paperwork. Keep in mind, that when doing so, it implies your product or service is market-ready and your trademarked name is being used in interstate commerce (i.e., You’re selling your products and services in more than one state.).

But what if you want to secure your name but aren’t quite ready to go to market with your products and services yet?

That’s where “intent-to-use” trademark applications can help.

About “Intent-to-Use” Trademark Applications

“Intent-to-use” is pretty much exactly what it sounds like; you plan to use your business name in commerce in the near future.

When the USPTO approves your intent-to-use trademark application, you have up to six months to start using your name. Realistically, you have more than six months to launch your products and services under your business name because it will likely take several months for the USPTO to process and approve your application.

You can file an extension if you’re still not ready when the six-month period after approval expires. Prepare to explain why you haven’t yet used your name in commerce; the USPTO wants to see “good cause” before approving your extension request. Also, realize you can’t delay your launch indefinitely. You’re allowed up to four additional six-month extensions.

What’s very advantageous about filing an intent-to-use application is that your filing date will serve as the date of the first use. So, even though your products and services aren’t on the market at that time, you will still have legal protection of your name effective on or after the filing date if someone infringes on your name.

If you file an intent-to-use application, make sure you use your name and request extensions when you need them. Otherwise, the USPTO will deem that you’ve abandoned your application. End result: the USPTO will cancel your application. That would mean you have to repeat the entire application process and pay application fees a second time—certainly, not the way to get your business off to a profitable start, is it?

Peace Of Mind Through Protecting Your Business Name

The sooner you apply for a trademark, the sooner you’ll gain peace of mind that another business won’t hijack your most precious branding asset—your business name.

For more information about trademarks, visit the USPTO website and talk with an attorney if you need legal advice. To ensure your application is completed and submitted accurately, consider using a trusted online business document filing service to handle the filing your forms.

Founder of CorpNet
Nellie Akalp is a serial entrepreneur, small business advocate, speaker and author. She is the founder & CEO of CorpNet.com, an online legal document filing service, where she helps entrepreneurs start a business, Incorporate, Form an LLC, set up Sole Proprietorships (DBAs) and keep a business in compliance across all 50 United States.