Trademark Timing

The timing of taking certain actions regarding trademark rights is tied closely to the timing and amount of investment in the mark.  General rules of thumb include:

SEARCH/CLEAR BEFORE USE.  Trademark searching ranges from free to cheap.  Changing a mark after use has begun can be extremely expensive.  By conducting a reasonable search prior to use to thereby ensure that you are clear of the rights of others, many disputes can be avoided. 

REGISTER WHEN THE MARK BECOMES IMPORTANT.  In the U.S., rights can be acquired by using a mark in commerce, even if the mark is never registered.  Still, registration provides benefits that are not obtained by mere use.  Federal registration covers a national geographic scope, which can be important if use is only local or regional.  Registration provides a presumptive right to use the mark and a presumption of ownership of the mark, both of which can be of benefit if a dispute arises.   Perhaps most importantly, registrations are easy for others to find when they search, making it less likely for someone else to adopt the same or similar mark to yours.       

FOR NEW PROMOTIONS, ITU BEFORE PRINTING.  For some marks, the initial investment in a mark is small, building gradually over a long period of time.  For other marks, the mark is introduced to the market with a lot of fanfare.  Federal law changed in 1988 to allow an "intent-to-use" (ITU) based application to be filed -  and allowed - even before a mark is used in commerce.  If a large roll-out or promotion of a new mark is planned, an ITU-based application should be filed as soon as possible - most preferably eight months or more before printing the promotional materials.  An early ITU filing gives the most certainty possible that use of the mark will proceed without objection by third parties.

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