When to file your trademark application

When to file your trademark

Unlike for patent protection, you don't have to file a trademark application before you start using your trademark. In fact, some brand owners do not file a trademark application at all, relying rather on their common law rights. However, relying on common law rights is not recommended as it is often quite difficult to prove trademark infringement for an unregistered trademark.

The rule of thumb is that the sooner you file your trademark application the better. The reason for filing your trademark application as soon as possible, is that, on the face of it, trademarks are awarded on a first-come first-served basis. In this manner, should you file your trademark application, your trademark application may be used to prevent any other trader who subsequently attempts to register the same or similar trademark in respect of the same or similar goods and services.

Furthermore, filing a trademark application before you commence business, may alert you to other trademarks that you may infringe during the course of your business.

If you find yourself in a situation of having applied for a trademark application, and your trademark application is found to be conflicting with another trademark application, you may be able to demonstrate prior use of your trademark prior to the filing of the other trademark so as to obtain registration of your trademark. As such, if you are considering filing a trademark application at a later date, it is imperative that you keep records of your use of your mark as a trademark. It may not suffice to have simply registered a domain name bearing the trademark, and your actual use of the trademark to distinguish your goods and services is required.

If you have any questions about when to file your trademark application, please contact us and we would be more than glad to assist you.

Last modified:03/10/2013