The question of whether federal trademark registration should be pursued is a frequent question of those in the marketing world, especially during difficult economic times. I wrote a short piece for Create Magazine a couple of years ago, and you can read it, here. As you will see, there are many benefits to registration and some significant risks in foregoing this valuable protection, making the relatively small investment well worth it.

Just so you know, nothing (including current economic conditions) has changed or rendered my thoughts on the subject moot, in fact, during these tough and challenging economic times, businesses and non-profits would do well to not cut this important cost or corner.

Now, some realize the importance of the protection, but in an effort to save or defer cost, they have considered holding off on filing a federal trademark application — to see how the product does — before making a final decision on the filing. If you or someone you know falls into this category, while I sympathize with your and their efforts to manage a tight budget, understand another risk that goes a step further than the risks already covered in the above-linked Create Magazine article.

To do so, after you have conducted the appropriate due diligence to clear use of the new name and mark, ask yourself how long it will take to get your product with the new name and brand in the stream of commerce and in the marketplace. Without the important benefit of constructive use relating back to the filing date of the federal trademark application, it is important to realize that your investment in preparing for the product launch may be lost altogether if another person or company files an intent-to-use trademark application, for a confusingly similar mark, even one day before you get to market with your newly named product. If this happens you and they may very well “see how the product does” with another name.

  • Could not agree more! I had a client that used my NameFlash(SM) naming service to develop a new name, and after a number of weeks settled on a name that appeared to be clear from a trademark standpoint (trademark clearance done before the original presentation). Just to be sure, I re-ran the trademark search and discovered, to my horror, that their biggest competitor had filed for the name the same day I was presenting it. In this case we were able to go to a plan B before the client had invested a lot of money in the original name, but it could have been worse!

  • Before launching into the market our basic approach is to first research trademark availability for any branded new product or service. (The Nomina app on the iphone is great for a quick scan of potentially trademarkable names.) The uspto.gov site is also helpful for browsing existing marks and their current status. Registering a mark directly through the USPTO.GOV site is also fairly painless depending on the complexity of the trademark. As you know, in order to register the mark you have to show use in commerce, so naturally you will have to market the brand before securing the trademark registration. Given how easy and inexpensive it is to conduct trademark search and registration online these days, there really is no reason not to initiate the trademark search process on a parralel track with the in market launch of a brand.