When Is Too Late to Trademark Your Company IP?

Trademarks allow businesses to claim ownership over their intellectual property (IP), making them valuable assets to both new startups and established businesses. Although business owners don’t have to go through the official trademark registration process to own their company marks, having registered trademarks has several advantages. 

Plus, leaving trademarks unregistered can leave businesses vulnerable to potential challenges from competitors, which can occur at any point. By claiming their intellectual assets in a timely manner, business owners can more effectively protect their IP. 

So when is it too late to trademark?

While some forms of intellectual property—such as patents—have strict registration deadlines, trademarks become valid from their first commercial use. There isn’t any official deadline for claiming trademarks with the United States Patent and Trademark Office (USPTO), so there isn’t any single point where it becomes too late for a business to register a mark.

Businesses gain ownership over trademarks by associating images and phrases with their goods and services. From the moment a business first uses a logo, design, or phrase that’s unique to its products, it has rights to the trademark as part of its intellectual property. Businesses can retroactively register a trademark at any point, even if they’ve been using the trademark for years. 

Guidelines for Registering a Trademark

Once a business owner begins the trademark registration process, they must respond to communications with the USPTO within a timely manner to keep their application active. In most cases, this involves replying to inquiries within three months. If a business owner abandons their application, the registration will not go through. However, they still have ownership over their intellectual property—it will simply exist as an unregistered trademark.

Unregistered trademarks, or common law trademarks, are covered under IP law. To qualify as a protected, common law trademark, an image or phrase must be distinctive to the business and used in its commerce operations. Protection for unregistered trademarks gives businesses the flexibility to launch their operations and identify their IP without having to pay for trademark registration fees right away. 

For example, the charity American Can won a case related to its trademark on the term ‘cars for kids,’ which they used locally in Texas since the early 1990s. In 2004, the company became aware of a similar charity, Kars 4 Kids, which it believed was violating its unregistered trademark with its name since 1995. Although American Can hadn’t registered the phrase ‘cars for kids’, its history of using the mark helped its team argue a case for trademark infringement.

Although unregistered trademarks are valid, they don’t have the same benefits and protections as registered trademarks. By quickly registering their trademarks, businesses can gain full legal support for their IP and strengthen any potential claims of infringement.

Even if a company has a clear right to its unregistered trademarks, it can access additional protections by going through the registration process. Benefits include:

Nationwide Protection

Common law trademarks typically only apply in the geographic area where the business is using the trademark. Other companies may be able to freely use the unregistered trademark in different states and cities, which can potentially confuse customers. A competitor may even officially register the trademark in another area, limiting potential expansion opportunities. 

By registering a trademark with the USPTO, business owners can enjoy nationwide protection of the IP. With a registered trademark, companies can avoid challenges from national competitors and protect their ability to use their trademarks freely as the business grows. 

Avoiding Infringement

With so many companies operating in different areas across the country, it can be challenging to keep up with which trademarks are available and which have already been claimed. During a company’s trademark application, the USPTO can identify any aspects of its trademark that could be encroaching on another company’s IP. 

If the USPTO finds that the trademark is already taken, the business can then make moves to further distinguish its business materials from competitors. Applying for registration as early as possible can help business owners avoid any surprises and give them the opportunity to make adjustments early on instead of after years of operating with a particular logo or phrase. By gaining official registration, business owners can be confident that they have a true, uncontested claim to their trademarks. 

Discouraging Infringement

Just as registration can help protect business owners from accidentally infringing on another company’s trademark, it can discourage other businesses from infringing upon them. When a business registers a trademark, the information becomes available in a database. This makes it difficult for competitors to claim that they didn’t know about the registered trademark, ultimately discouraging potential cases of infringement. If infringement does occur, having registration in place facilitates legal action against infringers. 

Proof of Validity

If someone infringes upon a company’s unregistered trademark, that company must prove that its trademark is valid in order to take action. This can be a lengthy process that involves finding and validating uses of the trademark. Going through the official registration process confirms that the trademark meets USPTO requirements for distinctiveness and use in commerce. It also creates an official record of the trademark’s date of first use, which businesses can use to both pursue cases of infringement and defend their trademarks against challengers.

Qualifying for Incontestability

Once a company registers a trademark, it can eventually apply for its trademark to become incontestable. This makes it much harder for someone to challenge the trademark, providing business owners with additional protection for their IP. A business can apply for incontestability after five years of official registration, so waiting to register can delay the process of making a trademark incontestable. 

It’s important to note that not all countries have the same system for acknowledging trademark ownership. The United States uses a first-to-use system, so trademark ownership goes to the company that can prove a longer precedent of using the mark. Other countries, such as China, use a first-to-file system, so the business that registers the trademark first typically becomes the trademark owner. Business owners who plan to operate internationally should be proactive about registering their trademarks to protect their IP in countries with first-to-file laws.

Pursuing official trademark registration may not be a priority for all businesses—until another company attempts to claim the trademark. If a competitor applies to register a trademark and you believe that you own that trademark, you can challenge the registration within 30 days of the registration’s publication. This involves going through the USPTO’s Trademark Trial & Appeal Board. 

After the 30-day opposition period, you’ll have to submit a petition to cancel the trademark. This process can be complex and time-consuming, so it’s wise to regularly monitor trademark applications that relate to your IP. Of course, registering your trademarks right away can help you avoid the process entirely. 

By making trademark registration a priority, business owners can enjoy the full protection of trademark law right away. Business owners can even plan ahead by registering trademarks for future use.

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