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When do I Need to Register my Trademarks?

I get this question often because it’s not simple. It boils down to a value question, and value questions vary from person to person. Generally though, the question for new businesses looks something like this: “Is the business my mark represents worth more than the cost of registration?”

For a startup or small company, cash is limited, so it’s key to determining the value of the mark precisely. The following are some things to think about to help you determine the value of registering your trademark:

What is the likelihood that someone else will start using it?

This is the biggest mystery because you won’t know for sure that someone else intends to use the trademark until they do. And if they register it, they’ve beaten you to the punch and you might be forced back to the drawing board.

To estimate the threat of another registrant registering first, see who else is in the field and what their marketing strategies are. Also do your best to search around for companies using slogans similar to what you’re thinking of. Google alerts may be a helpful resource.

How soon will you begin using the trademark in commerce?

If you’re about ready to launch, or you already have, then it’s time. Granted, you can earn some basic rights in the trademark simply by using it. But if there are two entities using a trademark, and only one has registered it, the entity with the registration has a distinct advantage. If you’re #2 to the USPTO, even if you used the mark first in commerce, you are facing a more difficult challenge to ultimately registering your trademark.

How soon do you anticipate investment?

A trademark is an asset with value, and it has that value whether it’s registered or not. But if you don’t register, and if you don’t do a background check to see what else is out there, you aren’t taking this asset’s security very seriously. In other words, would you back a venture whose assets aren’t secure?

What are your competitors up to?

If you have reason to believe that your competitors are moving into your space, you might want to get a jump start on the process. If you do not, the competitor may beat you to the filing, especially if many people are rapidly joining the industry (e.g., mobile applications). See above for more on that.

But there are other ways competitors can cause headaches.

When trademark applications are submitted, they undergo review and then are published for opposition. Normally nothing happens during this period, because hopefully nobody is paying attention to your newly registered trademarks. But if you think competitors may start watching you soon, it may be nice to get your trademark in before they start keeping tabs on you.

Here’s a beer-related example.

Dogfish Head brewery makes a pumpkin beer called Punkin Ale.” like a good brand owner, they applied for that trademark. After clearing some initial hurdles with the trademark examiner, it was approved. But once it was published for opposition, Anheuser-Busch objected in an effort to completely bar its registration.

Dogfish Head was ultimately successful, and they own the mark to this day. But it took extra effort, and in your case an earlier registration may allow you to slip under competitors’ radar.

It’s not easy to answer this question. But these are at least some of the things to think about when you are faced with this decision.

You can contact the author here, and follow @revolvethis and @gerritbetz on Twitter.