I’m often asked, ‘When should I apply to register my business name as a trademark?’ Like with buying real estate, the best time was yesterday; the second-best time is today. That’s because trademark rights are based on priority of continuous use, and the sooner you register your trademark, the earlier your nationwide priority is established. In other words, it’s not necessarily who is the biggest name, but who is the first name. Registration plants a flag with your priority date that establishes your place in line on a nationwide basis.
There are also other benefits, like incontestable status after five years of registration and continuous use, which protects your trademark against many challenges an infringer or competitor might raise. The sooner you register your trademark, the sooner that 5-year clock can start running.
When I tell people that they should register their business names as trademarks as soon as possible, savvy clients will sometimes point out that common law rights already protect their business names without registration – and that’s true, to an extent. With a couple of exceptions, your trademark’s priority date is established based on your date of first use in United States commerce. But common law rights are limited to the geographic market in which you are using the mark. In other words, just because you’re using your trademark in Georgia and Florida without a federal trademark registration, doesn’t mean you have trademark rights in South Carolina, New York, or anywhere else in the United States. It’s possible that a junior user could adopt a confusingly similar trademark in another U.S. market, leaving your common law rights unable to protect your brand. Federal registration solves that problem by giving your trademark a statutory nationwide scope of protection.
There’s also another advantage to filing early: you can apply to register your trademark before you even use it under Section 1(b) of the Trademark Act if you have a bona fide intent to use the mark in commerce. Once your trademark application matures to registration, your priority date tacks back to your application date. In some instances, this can give you as much as three to four years of additional priority.
Of course, the most common reason not to register trademarks is budget. Like every business investment, balancing budget against strategy and return on investment is a critical balancing act. Not everyone is the Coca-Cola Company with a seemingly unlimited trademark budget, and which owns registrations for dozens of variations of its classic “COCA-COLA” trademark. Still, I’ve collected some of those trademarks for discussion.
At their core, each of these is “COCA-COLA”. Registration No. 238145 for “COCA-COLA” in plain block letters is the foundation on which the rest are built and will likely be the primary mark on which any trademark infringement action rests. But the Coca-Cola Company registered the mark in a variety of different presentations with good reason. Each of these presentations, and their respective registrations, adds a layer of protection for the Coca-Cola Company’s intellectual property rights and branding strength. Those registrations add space and breadth to the Coca-Cola Company’s rights, which it can use to protect against junior users who seek to imitate the “COCA-COLA” branding with less direct word copying. The bottom line is that the best time to register your business name is as early as possible. Registration gives you nationwide rights and starts the clock toward incontestability. From there, you can grow your portfolio strategically, adding new layers of protection as your business expands. Like most investments, it’s about timing and balance, and the right plan is usually best built with professional guidance. To ensure your brand is fully protected contact Jimerson Birr.