Determining When To Trademark Your Idea

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One of the questions designers often ask me is “When should I trademark?” Before we answer that question, it is important to make sure the basics are correctly understood.

What Is A Trademark?

Simply put, a trademark is your right to use a name, logo or slogan. Trademarks become a major asset of any fashion brand. The consumer public will begin to recognize and associate the brand name and logo with your product, and that will help you make sales and grow your business.

Why Trademark Your Brand Identifiers?

Owning your trademark is a long-term investment in the fashion business that you hope to build. As you are marketing and selling your apparel line, holding fashion and trunk shows, creating pop-up stores, and running social media campaigns, you are conveying the brand’s message, product experience, quality, and company principles that will ultimately create the value that the consumer will associate with your product. All of that will eventually create brand equity symbolized by the logo, words or slogan that is trademarked. Ultimately, brand equity can lead to additional sources of revenue through licensing deals and investment that ultimately propel a fashion brand to financial success.

When Should You File Your Application For Trademark Registration?

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Building brand equity starts with the United States Patent and Trademark Office (“USPTO”) granting you the rights to a registered trademark, a process that starts by filing a trademark application for the exclusive rights to your brand identifiers. But when should you file for registration?

This is a tricky question because trademark registration has a number of risks and obstacles inherent in the process that you must navigate through depending on your own specific situation and financial resources.

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Risk No. 1: You Wait Too Long

Trademark registration requires that the “applied-for-mark”, be actually used in commerce at the time that you file. Yet, if you wait to file your application until your line is selling, a very real risk exists that the USPTO will refuse to grant the registration because your applied for mark will cause consumers confusion with another registered mark that is the same or similar. By this time, you’ve spent a significant amount on your branding – labels, hangtag, website—that now need to change, meaning you need to spend more money. You’ve also invested emotionally in a brand name that captures your business and creative vision. Believe me, it is hard to let go of a brand name that has been so meaningful to your efforts and work.

Even worse, if you continue to use the brand name you may very well be infringing on another’s trademark and setting yourself up for litigation and an award of money damages against you.

Risk No. 2: Your Application is Not the First in Line

The trademark process is first come, first serve. Whoever files first, will have their application processed first. All other applied-for-marks that are deemed the “same” or “similar” to other registered marks or pending applications will suspended until the first application is completed, meaning the first applied-for-mark even is either registered or abandoned.

Your application will be delayed until the USPTO makes its final determination and the length of the delay depends on the status and number of application(s) that filed before you. It may take a year, if not years (yes!) before your application proceeds through the process.

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Risk No. 3: The Trademark Process is Long

There is no guarantee that you will actually receive registration of your applied-for-mark just because you filed an application. That conclusion is up to the USPTO and it makes its own independent determination as to whether the mark can be registered or not.

You need to remember that the trademark process takes time. In fact, the USPTO will wait 3 months before it even assigns your application to a trademark examiner for review.

Once reviewed, the USPTO may have questions for you that require an official response (these are called office actions). When all is said in done, it could take anywhere from 8 months to several years to actually receive your registration or find out that the registration is refused. (See Risk No. 1 above)

By that time, your sales may have picked up, you’ve spent even more money on branding and marketing, and actually developed a customer base, and then you learn that your registration is refused. Now you are faced with rebranding and losing the brand equity and customer base that you’ve built!

Questions to Ask That Will Help Determine Your Trademark Timing

These 3 risks bring us back to the issue of timing.

Early on you need to estimate your timing of when the mark will be on commerce and back out the registration process.

On the one hand, you don’t want to spend a lot of money on filing fees and legal fees (these can add up!) before you’ve proven you have a viable fashion brand. On the other hand, you don’t want to spend a lot of money building a brand if you are not sure you will be able to protect the name/logo and have exclusive rights to use it in the future.

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All in all, the timing of when you should file your trademark application depends largely on your own specific situation and cash resources.
Ask yourself some questions like,

  • “How much start-up capital do I have? Can I afford to trademark in one class or multiple classes?
    “How attached am I to the name or logo?”
    “What is my risk tolerance for losing this name or infringing on another’s registered trademark?”
    “Do I plan to find investors that will want the company to own the trademark?”
    “Where am I in the design and sales process?
    Do I have critical mass with my sales and I have developed a customer base that I want to protect?

You can see how getting a handle on and jumpstarting the trademark registration process is an important component of your fashion brand strategy. Although it can be time intensive and costly in the short-term, trademarks are a wise long-term investment in the creativity and vision of any fashion brand. The clock is ticking, so get out there and start doing your trademark homework!

Fashion Law Studio is not a law firm or a substitute for an attorney or law firm. The information contained in this blog post does not constitute legal advice.

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