When Should I Register a Trademark? by Kelley Way
Let’s welcome back monthly columnist Kelley Way as she shares with us “When Should I Register a Trademark?” Enjoy!
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“When should I register a trademark?” is an excellent question that, frankly, I wish more of my potential trademark clients would ask.
Many people seem to think they must register their trademark before they even have a product on the market. In some cases, this is a good idea, but there are other cases where it might be better to wait.
Here are a few things to consider when deciding on the timing of your registration.
Do You Have to Register a Trademark?
First, you should know that you don’t have to register with the U.S. Patent and Trademark Office to have a trademark. All that’s required to have a trademark is that you are using the mark to identify the source of a product or service currently available for sale.
If you have a word, phrase, or image that consumers will connect to the source of your product or service, then you have a trademark.
However, there are advantages to registration, like the ability to protect your mark throughout the United States.
Suppose you’re only planning to sell your product or service in a small geographic area (for example, a delivery service that only delivers within a five-mile radius). In that case, you may not need a federal registration at all. On the other hand, if you’re selling nationwide and possibly looking at international sales, then a federal registration is a good idea.
Can You Afford to Register a Trademark?
Second, you should consider your resources.
Registering your trademark is a long and expensive process, and registering before your product is available for sale makes the process longer and more costly.
If you have plenty of cash and a long timeline before your product is ready to go to market, then it certainly doesn’t hurt to get the ball rolling.
But if you have a tight budget and nothing to work on while you wait for the application to go through, you might be better off just getting your product on the market and making some sales before looking at a trademark registration.
Is Your Mark Unique?
A third consideration is the mark itself.
When you have a famous mark, you’re worried about other people trying to pass off their products as yours. When you’re just starting out, you’re concerned that someone else will come up with the same name for their product or company.
If you’ve come up with a very unique and distinctive trademark, the risk that someone else has already thought of it is low, and registering your mark is a bit less urgent. On the other hand, if your mark is something more generic that someone else may already have, you probably want to register sooner rather than later.
Where Are You Selling?
And last but not least, you should consider where you are selling your product or service.
Platforms like Amazon and Etsy have a fair number of trademark infringers, but they’ll only enforce a seller’s trademark if the seller can prove the mark is registered.
If you’re planning to sell through them, or through other platforms with a similar policy, then registering your trademark early is a good idea. If you are selling through your website or physical storefront, that takes some of the urgency off of registering.
There are other considerations as well when thinking about when to register your trademark, but the above are the big ones that should get you thinking.
If you would like to discuss the timing of your registration with me, you are welcome to email me at kaway@kawaylaw.com.
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ABOUT THE AUTHOR
Kelley Way was born and raised in Walnut Creek, California. She graduated from UC Davis with a B.A. in English, followed by a Juris Doctorate. Kelley is a member of the California Bar, and an aspiring writer of young adult fantasy novels. More information at kawaylaw.com.
