Things every client should know about trademarks

Is it important to file the trademark application quickly?

While a trademark registration cannot be invalidated in all of the same ways applicable to a patent, it is nonetheless important to file a trademark application for a company’s important trademarks and service marks with dispatch. And this is so for several reasons.

First of all, the first to register a trademark is the presumptive owner of the mark. That is, if your company Alphas Corp. is in fact the first company to adopt a trademark for a set of goods or services, but another company Beta Corp. beats you to the punch in filing for a federal trademark registration for the mark, then you will have to timely institute a proceeding at the U.S. Patent and Trademark Office to correct the matter. That proceeding may well result in a vindication of Alpha Corp.’s right to a registration; however, it will also result in costs you would have otherwise avoided by filing quickly.

Second, a registered trademark will eventually be deemed “incontestable” if it meets certain requirements. So, again referring to the example above, if your company Alpha Corp. is in fact the first company to adopt a trademark for a set of goods or services, but another company Beta Corp. beats you to the punch in filing for a federal trademark registration for the mark, then, as stated above, Alpha Corp. will have a period of time in which to institute a proceeding at the U.S. Patent and Trademark Office to correct the matter. However, if Alpha Corp. waits too long, Beta Corp.’s trademark registration will become “incontestable” and resistant to any claims that another company used the mark first (even if that evidence is conclusive).

Bottom line: when Congress passed the federal trademark act, they created incentives to companies to diligently file their trademark applications at the earliest possible time. Similarly, they established that, if you take no action whatsoever, you can lose valuable trademark rights to other companies that do demonstrate diligence.