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Is it necessary to get a Trademark filed right away or can it wait?

New York, NY |

I am looking to file a trademark for a name i made up. I am confident it's not been ever used and have done extensive research with a friend of mine who works at a law firm.

I asked my friend and he said it's not necessary because of what we have in the United State's as Common Trademark. So, in essence if i just launch the company and have press or media attention, that can serve as evidence of first use, right? And i won't have to do a trademark until i want to?

Attorney Answers 5

Posted

Your friend at the law firm doesn't do trademark work. Ideas for a name are only good for "intent to use" trademark filings. Unless and until the mark is attached to a good or service, the "intent to use" mark cannot be converted into an application for a trademark. Press coverage unrelated to you goods or services is worth nothing. In the US, priority is established by first to use, not first to register.

The above is general legal and business analysis. It is not "legal advise" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.

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Asker

Posted

Thanks Michael. So that means i can go ahead and start using it and that establishes first use and then file trademark?

Michael Charles Doland

Michael Charles Doland

Posted

Yes. First to use in interestate commerce is the most important single feature to help your claim. By the way - real use, not like idiots tell you - a fake sale to a friend in another state.

Posted

There is No good reason to wait. For $275, it's one of the best bargains out there (besides a copyright, which is free). If you rely on common law rights you may be very disappointed in the result. There are several possible defects that your common law rights may suffer from, all of which can easily be cured by simply filing an application...it takes about 10 minutes if you know what you are doing. A lawyer is not necessary (although of course I'd recommend one). I charge $499 (plus $275 filing fee) for EVERYTHING through registration. Most attorneys charge about $500 merely for filing. www.trademarksa2r.com

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Asker

Posted

Thanks Gene. How soon do you recommend filing one? Reason why i am not starting with filing right away is because i don't even have the $275 yet so i was hoping to get it done a month or so later..

Gene Bolmarcich

Gene Bolmarcich

Posted

You're very welcome! It's hard to say. I can only say the sooner, the better. I wish there was a way to give the USPTO an IOU but unfortunately they want a credit card number. Chances are that your trademark will be available next month if it's available today. Just no way of knowing. The common law rights are a good start in any event. The big benefit to filing an application is that you get automatic NATIONWIDE rights (if that is an issue, i.e. your use is otherwise local), you don't have to prove that a substantial portion of the relevant consuming public is aware of your use (there is an undefined threshold for the extent of use that will get you over the hurdle of proving common law rights, whereas with an application in place you don't have to worry about that). All of this assumes that you eventually get your registration. When you have your $275, if you would like to use my website, I can take $100 off. What makes me unique is that I do everything after filing regardless of how much work it may take to fight it out with the USPTO to get your trademark registered. All other flat fee services charge an hourly rate for that.

Gene Bolmarcich

Gene Bolmarcich

Posted

There seems to be some confusion here. In the U.S. there ARE common law rights but often these will be limited either geographically OR what you think is sufficient "use" may in fact not be according to a court (this is one of those hard to quantify tests of "you know it [a common law mark] when you see it"). Another way of establishing rights is by filing an application (either based on prior use OR intent-to-use). Either kind of application gets you the same benefits, except that with the latter, you'll eventually need to use the mark and show proof of such use. Until registration, rights are contingent. When a registration issues, all of the rights come into force, including the priority established by the filing date.

Posted

It is not necessary to file a trademark application right away. Unlike a patent, where you can lose your right to file at all, you cannot lose your right to file a trademark application. The only thing you have to worry about is someone else using your mark before you do. In some cases, you could have some geographical limitations. But if you don't even have $275 to file, save your money for something more important.

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Posted

Trademark rights arise from use in commerce, not registration. Common law trademark protection can arise from use use of an original trademark even if you do not register it.

But failure to register a trademark that you want to use in your business is a very risky approach, and you would be wise to register as soon as possible. Registration with the U.S. Patent and Trademark Office gives you national rights in the trademark. It also results in significant procedural advantages during litigation.

Even more importantly, and with the greatest respect, I would not make a "branding" decision based on the amateur reseasrch conducted by you and your friend. Your choice of a trademark, as part of a branding decision, is one of the most important decisions that you will make in developing your business. Intellectual property/trademark counsel are trained in conducting trademark searches and analyses so that you can have more confidence that your use of the trademark will not violate rights owned by others. Whether you friend works at a law firm or not, if you do not use trademark counsel for this branding process, you are making a potentially major---and financially disastrous---mistake. And frankly, if you do not have adequate resources to retain intellectual property and business counsel, then you probably are not ready to go into this business----laying the proper legal foundation is a prerequisite to the success of any business and that means including in your financial plan adequate resources for legal counsel.

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Posted

A “trademark” or “service mark” can be made up of any word, name, symbol, logo, color, sound, or product shape or any combination of these elements. Typically, a trademark is used to mark goods. Alternatively, a service mark is used when selling services. This article refers to trademarks and service marks synonymously.

A trade name, which is similar to a trademark, merely represents the name of a company. Similarly, a domain name is part of a unique address that identifies a particular web site on the Internet. Typically, trademarks trump trade names and domain names and, therefore, registering one’s trade name with the state is not good enough to protect rights in the name. The same is true of domain names.

Protecting One’s Marks

Generally speaking, trademarks can be protected in four different ways. First, trademarks can be nationally registered through the United States Patent and Trademark Office. Second, trademarks can be registered on a state-by-state basis. Third, trademarks can be protected within specific geographic areas under the common law of particular states. Fourth, trademarks can be protected internationally. As an aside, charitable groups, non-profit corporations, professional and fraternal groups and educational and religious institutions receive the same protection against confusing use of trademarks and corporate names as for-profit business organizations.

Here is an article I did for our local bar association on trademarks. I think you will find it helpful.

This blog provides is not intended to give legal advice and is not a substitute for the same; if the reader has a concern they should contact a knowledgeable attorney.

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