{2 minutes to read} When selecting a new name for a business, product, or service, one of the first steps should be a trademark availability search to look for potentially “confusingly similar” trademarks that could block the registration of your trademark.
Ideally, the next step would be to file a trademark application with the US Patent and Trademark Office (PTO) to preserve your rights to the name. If you allow too much time to pass between conducting the search and filing the application, you could end up in a tough spot.
A trademark availability opinion offers a snapshot of the PTO records at the time the search was conducted. It’s possible that, in the time between the search and filing, a third party will have filed an application that would block the one you proposed.
What are the chances of an intervening problematic filing?
It happens more often than you may think. In the PTO’s fiscal year 2018, there were 638,847 trademark applications filed. That’s an average of approximately 1,750 new applications filed each day. The longer you wait, the greater the risk.
Trademark rights in the US are generally based on “first to use” (not “first to file” like many other countries). So, if you launch your business, product, or service without filing a trademark application, and someone files a problematic trademark application, you could have grounds for opposing that application and/or making a claim for trademark infringement. But, this could be an uphill and expensive battle.
If you don’t have “prior use” on your side, you may have to rebrand or take your chances using an unregistered trademark.
The best practice is to file your trademark application as soon as possible after the search. If you have to wait, have the search refreshed before filing the trademark application to look for potential issues.
If you need help filing your trademark application in the US, or in any other country, please contact us at 212-360-2307.
Kelly Weiner
Trademark Counsel
Law Office of Kelly Weiner PLLC
175 Varick Street, Fl 6
New York, New York 10014
(E) info@kellyweinerlaw.com
(P) 212.360.2307