Trademark Regrets. Could Have – Would Have – Should Have.

You picked out a name for your new product or service.  Perhaps a marketing firm helped you.  You’ve been using the new name internally and everyone has gotten attached to it.  There is still a lot to do to get the product or service to market, but the excitement about the opportunity is high.  Maybe you searched the internet to see if anyone else was using the name, and maybe you even went to the United States Patent and Trademark Office (USPTO) trademark database to search for marks that could conflict with your chosen name.  Everything looked good, so you kept moving the project forward.

A few months go by before someone (maybe your lawyer) asks if you filed a trademark application for your name.  You say – we’ll do that later – and a few more months go by.

Then you file a trademark application (maybe with your lawyer) but don’t do any more internet or USPTO searches.  Four months later you hear from the USPTO Trademark Examiner:  SOMEONE ELSE FILED AN APPLICATION TO REGISTER YOUR TRADEMARK!  Unfortunately, now you may be back to the drawing board to pick out a new name.

This is not imaginary or paranoid.  It happens!  The other trademark application may not specifically identify the product or service associated with your name, but that doesn’t mean the other mark won’t present an obstacle to overcome, and in a worst case scenario a complete roadblock, to your use of the name.

An intent to use trademark application allows you to file an application before your mark has been used, so long as you have a ”bona fide intent” to use the mark in commerce.  The primary benefit of an intent to use application is that if your trademark is registered, the date of first use for your mark will date back to the date the intent to use application was filed.

You COULD HAVE filed an intent to use trademark application as soon as you had a “bona fide intent” to use the trademark.

You WOULD HAVE filed an intent to use trademark application had you recognized the risk.  The cost would have been insignificant compared to the impact of the example we described.

You SHOULD HAVE filed an intent to use trademark application.  Someone in the early months of development should have flagged this topic and insisted that a trademark application be filed.   Any lawyer involved in the day to day operation of your business should have asked about the plan for a trademark application when they first heard about the new product or service.  No one should have assumed the marketing firm would handle the trademark application filing.

To prevent any trademark regrets, be sure that if a name is identified for a new product or service you consider whether it is appropriate to go ahead and file an intent to use trademark application while you continue the process to bring the name to market.  Don’t make the mistake of postponing your consideration of the issue and then falling victim to “could have, would have, should have….”

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