A trademark can be a word, phrase, logo, or combination of the three. This “mark” serves a specific purpose: it identifies the source of goods or services. The purpose of trademark law is to avoid consumer confusion.
When you use an inherently distinctive mark “in commerce,” you automatically obtain trademark rights and can identify your goods with the TM marker. These “common law” rights include the exclusive ability to use your mark in connection with your goods. However, these rights are limited to the geographic region in which you provide your goods. In other words, a competitor in a different state can legally use the same mark as you.
On the other hand, if you register your mark with the United States Patent and Trademark Office (USPTO), you obtain significantly greater rights. Registered marks are identified by the use of the ® marker. Instead of being limited to your geographic area, you obtain the exclusive right to use your mark in connection with your goods anywhere in the country. You lock out the competition, nationwide, from using your mark in connection with similar goods.
If your business has any aspiration to distribute outside of your local area, including a hope to do so in the future, trademark registration is highly recommended. To see why, take a look at the following example.
Over the course of three years, Brewery A spends an ungodly amount of money to get its product to market in its area. During that time it sweats over beer names, marketing, and establishing brand recognition. It works. Distribution plans are prepared and more internal investment is made to keep up with increased production demands.
Three months into distribution, Brewery A receives a threat letter from Brewery B, a brewery in another state. Brewery B filed for trademark registration of the mark associated with its best selling beer prior to Brewery A’s expansion.
Brewery B won the race to file and has nationwide priority to use that mark, subject to Brewery A’s common law rights. While Brewery A may be able to preempt Brewery B, it will cost significant legal fees and could take years to complete. This uncertainty can sink a business.
This situation is completely avoidable if Brewery A filed for trademark registration prior to expansion or, as explained below, before using that mark at all.
To avoid uncertainty, and to avoid trademark infringement concerns, you should file for trademark registration before using a mark in commerce. This is called filing on an “intent to use” basis.
In general, a trademark application filed on an intent to use basis reserves your priority rights as of the filing date. If the application is later approved and a Statement of Use is filed showing actual use in commerce, the registration issues with a priority date that relates back to the original application date. This means that even if another party begins using the same mark after your filing date, your registration will take priority over their use nationwide.
The title of this post is not an exaggeration. Filing for trademark protection early — before launch, before advertising, before you invest in packaging and labeling — is one of the highest-value legal investments a growing business can make. And “often” matters too: as your product line, service offerings, and branding elements expand, each significant new mark deserves its own application.
Consider what happens to businesses that wait. They invest in product development, build customer recognition, launch with fanfare — and then discover that their core brand name is already registered by someone else in a related category. The options at that point are grim: rebrand at enormous cost, attempt a buyout negotiation with the registrant (often expensive), or litigate over priority rights (even more expensive and uncertain).
Filing early avoids all of these scenarios. An intent to use application for a mark you have not yet launched costs a few hundred dollars in USPTO fees plus attorney time. Compare that to the cost of a trademark dispute or rebrand after three years of brand-building investment.
Before filing for trademark registration, you must conduct a clearance search. A clearance search examines whether any existing registered marks, pending applications, or common law uses could conflict with your proposed mark. Common law users — businesses that have been using a mark in a particular geographic area without registering it — can assert rights against a subsequent federal registrant in the territory where they have established use.
A comprehensive clearance search covers the USPTO’s trademark database (TESS), state trademark registries, domain name registrations, social media handles, business name databases, and industry-specific trade publications. The results are analyzed against the likelihood of confusion standard: whether an ordinarily prudent consumer would be likely to be confused about the source of goods or services bearing the two marks.
Skipping clearance is one of the most common and costly mistakes businesses make. An attorney opinion following clearance gives you both a risk assessment and a documented basis for a good faith adoption of the mark — which matters if you ever face an infringement dispute down the road.
The trademark application process at the USPTO typically takes between 12 and 18 months from filing to registration, assuming no complications. The key stages are:
The time to talk to a trademark lawyer is before you pick a name, before you design a logo, and before you go to market. Revision Legal’s trademark attorneys help businesses at every stage — from initial clearance through registration, enforcement, and portfolio management. We represent companies in all industries and of all sizes, from startups to multinational brands.
Do not wait until you have a problem to protect your brand. Contact Revision Legal at 855-473-8474 or through our website to schedule a trademark consultation today.
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