November 18, 2013

Maximize Your Federal Trademark Rights by Filing Early

by randymichels


In my last post, I discussed how Coca-Cola takes advantage of the tremendous bang for the buck provided by federal trademark registrations by filing frequently. An ordinary can of Coke is protected by no less than 10 federal trademark registrations.

Another important lesson that can be learned from Coca-Cola is to file early. There are not many businesses that filed federal trademark applications before Coca-Cola. The first federal trademark application was filed on July 28, 1870, by J.J. Turner & Co. for the mark "EXCELSIOR No. 1 Peruvian Guano" for fertilizer. Even though J.J. Turner & Co. filed first, the first federal registration was issued to the Averill Chemical Paint company on October 25, 1870, for a design with an eagle and a ribbon and the words "Economical, Brilliant."

Neither J.J. Turner & Co.'s registration nor Averill Chemical Paint company's registration is still in use today. The oldest U.S. trademark still in use, SAMSON with the design of a man and a lion, registered on May 27, 1884. Samson Rope Technologies, Inc. uses the mark on cords, line, and rope.

Coca-Cola filed its first federal trademark application for the words COCA-COLA in its now-famous script on May 14, 1892, and it matured into a registration on Jan. 31, 1893.

It took more than eight months for the application to mature into a registration. Today, it can take a year or more for a trademark to be registered. To obtain the benefits of a federal registration, it is better to file sooner rather than later.

By filing early, trademark owners receive relatively quick feedback from the U.S. Patent and Trademark Office ("USPTO") regarding possible conflicts with competitors, registrability issues, or other problems that may require choosing a different trademark. Applications are assigned to an examining attorney at the USPTO to assess registrability about three months after the filing date. The examining attorney may issue a letter called an "Office Action" refusing registration. The most common reason to refuse registration is a "likelihood of confusion" between the proposed mark and a registered mark owned by another party (or a previously filed application owned by another party). This refusal can prevent wasting valuable time and resources on a trademark that ultimately cannot be registered and protected.

In addition, the information on new trademark filings is made available to the public on the USPTO online databases just a few days after filing. This allows competitors who are monitoring trademark application filings to voice their concern at an early stage.

By filing early, you can also avoid disputes before they happen. Third parties who search the USPTO database before they file will discover your trademark application and will be motivated to choose a different trademark. Third parties will be even more motivated to select a different trademark after your application matures into a registration.

Federal trademark registrations offer tremendous bang for the buck. To obtain the full benefit of the registration, however, the application should be filed as soon as the mark is selected. By doing so, you can learn at an early stage whether the trademark will be easy or hard to protect.

The lawyers at Trademarkology provide trademark registration services backed by the experience and service of one of the nation's oldest law firms. Click here to begin the process of protecting your brand name with a federally registered trademark.