When can I file a trademark application?

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Brand owners often wonder when they are permitted to file a trademark application.  Do they have to file it before they launch the brand, or wait until after they’ve launched?  The answer is…either!  There’s no “have to” when it comes to timing on a trademark application filing.  You can file after you’ve launched.  You can file before you launch.  The “when” depends on your brand and your IP strategy.

There are two types of trademark filings for U.S. based applications: use based and “intent-to-use.”  (We’ll touch on the overseas applicant options in a future post.)  The first filing type is for those trademarks whose goods or services are already moving through  interstate commerce.  Pay attention to the “interstate” requirement.  You cannot file a use based application unless your goods/services are available to consumers in more than one state.  

The second type of filing is the “intent-to-use” (“ITU”) basis.  This means that you are filing for a mark which you intend to use in interstate commerce within a reasonable amount of time of the filing date.  (Without getting into too much legalese, think no more than 3 years from the application’s filing.)  The ITU filing goes through the same process as a use based filing.  However, a registration for an ITU application cannot issue until you provide the USPTO with confirmation that the mark’s goods/services are moving through interstate commerce.  

What if you’re close to launching your brand?  Should you wait to file a use based application, or get underway with the ITU option?  This is where the IP strategy discussion comes into play.  The answer depends on your specific brand and the products/services associated therewith.  If in doubt, ask for help from a trademark expert.  Remember, it’s better to spend a little bit of time getting the job done right in the first place than in is to spend a whole lot of time (and $$$) fixing problems down the line.  

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