Last updated on July 17th, 2018
When to register is an important question, and the answer can vary case by case. Below we’ll discuss the factors that should motivate your decision and give you a better idea of when federal trademark registration is right for you.
Federal Versus Local: Not Every Business Should Register
As a Virginia attorney, I can help clients from all 50 states and around the world when it comes to Federal Trademark Registration. Not so much when it comes to state trademark matters—for those issues I can only assist in Virginia.
This concept—the interplay between federal and local law—is important to you because it may affect your decision of when and how to register. If you don’t use your mark in a way that interacts with federal law, then you can put Federal Trademark Registration on the back burner.
For example, if you provide services or products to a limited geographic area—say you’re a restaurant or a barber shop—then you may never conduct interstate commerce, which is a requirement for federal registration of your trademark.
In that case, the answer to, “When should I register my mark?” may actually be, “Never.”
Now, if you have bold ambitions and you want to franchise your restaurant or sell your salon’s secret shampoos through an online presence, that analysis can change. But until you’ve conducted interstate commerce, seeking Federal Trademark Registration shouldn’t be a priority. You’ll need to talk to a local expert—a trademark lawyer licensed in your state—for guidance on state specific trademark matters
(One quick caveat: You can file what’s known as an “Intent-to-Use” trademark application if you intend to use your trademark in interstate commerce within six months—more on that later.)
Have You Used Your Mark In Interstate Commerce?
When we say “interstate commerce” in trademark law, we aren’t saying that you need to have a large volume of sales throughout the country—you only have to make one sale across one state line to apply for Federal Trademark Registration. And if you are successful in obtaining registration federally, you receive trademark protection in all 50 states.
That’s why most businesses only pursue federal trademark registration—it makes more sense than seeking protection on a state-by-state basis.
If you’ve sold products or services via a website to clients in different parts of the country (or world), then you’ve satisfied the requirement and you should think about registering. For blog clients who don’t necessarily host an online store, I’ve used Adwords revenue statements and Google Analytics reports showing blog visitors from all around the world as appropriate evidence of interstate commerce. Virtually any use of your mark that earns money and reaches outside of your state can qualify your mark for registration.
So if you’ve used your mark in interstate commerce, now might be a good time to file for federal trademark registration.
Can I Register Before I Use the Trademark?
If you haven’t yet made a sale across state lines, but you’re preparing a new business or product launch, you can file an Intent-to-Use application. While you won’t be able to use the registration symbol—®—until you’ve shown evidence that you have used the mark in interstate commerce, you can get through the procedural aspects of registration early on.
With an Intent-to-Use application, the USPTO examining attorney will conduct her own search, and, if she doesn’t find any conflicts, she’ll allow your mark to be published in the Trademark Gazette. Publication in the Gazette doesn’t mean your mark has been approved for registration, just that no immediate conflicts or flags were raised in the examining attorney’s search and analysis.
Your mark is published to the world in the Official Gazette so that other mark holders have an opportunity to object to your registration.
If everything moves forward without any hitches, your intent-to-use trademark application is approved. However, you still won’t have a registered trademark—you can’t use the circle R ®—until you file a Statement of Use with the USPTO. That means you aren’t actually registered until use the mark in interstate commerce.
If an intent-to-use application doesn’t actually give you a registered trademark, then why do it?
There are legal reasons, like priority concerns, that can play into your decision. There are also business and marketing strategy reasons that might prompt you to seek registration as early as possible.
If you’re considering the intent to use process instead of waiting till you’ve used your trademark in interstate commerce, talk to an attorney.
Hobby Businesses and Financial Considerations
So now you know that you can register after you’ve used the mark on goods or services sold across state lines, and you know that you can even begin the registration process when you are merely in the planning stages of your marketing strategy.
But more than the question of “Can I Register a Trademark?” you also need to think about “Should I Register a Trademark?”
It’s so cheap these days to throw up a website and start making sales across the nation. Many small businesses start in basements and garages. Some business endeavors are merely hobbies.
While some of these businesses bring in large amounts of revenue, others may only bring in a couple hundred dollars a month.
Trademark registration can be costly. Not only do you have to think about filing fees, ranging anywhere from $275 to $325 per international classification, but also trademark search reports and attorneys fees. If annual revenue is modest, trademark registration might not be worth it.
After all, trademark registration isn’t a requirement.
But for businesses who take themselves seriously, and who plan on growth and increased sales in more than one state, Federal Trademark Registration should be part of your business strategy. And when there’s money on the line you shouldn’t just register your mark, you should hire an attorney to make sure it’s done right.
The answer to when you should register your federal trademark varies, but hopefully you now have a better understanding of when is right for you.