It’s not unusual for an inventor laboring over the refinement of their creation to land upon an inspired product name early in the development process. After years of development, this name can seem indispensable—an integral part of the concept itself. But quite often, product developers get the bad news that their desired brand cannot be trademarked for one reason or another, and that a rebrand is necessary.
In addition to the shock of having to give up a beloved branding, this can result in having to trash expensive branding guidelines and concepts. Having to invest in a fresh round of branding concepts often adds a significant cost on top of existing product development expenses.
How best can developers avoid this problem and secure their trademarks early on? Or failing that, how can they learn whether there’s an issue, and make the necessary corrections?
First, it’s often advisable to refer to a trademark attorney when you’re actively developing a product with the intent to market it. Give the cost of marketing and branding services, you want to ensure that you’ve properly secured the trademarks around which you’re building your brand, and not be confronted with an unpleasant surprise late in the development cycle. The Law Office of Michael O’Brien can help you secure your company and brand marks, identify potential problems, and determine how and when to rebrand. To learn more, contact our office by calling (916) 760-8265, or send us a message using our contact form.
However, there are some considerations you can mull over before choosing to refer to a lawyer. In short, there are two main options for those who want to secure a trademark for branding purposes.
Option 1: File an in-use trademark application.
If you are already using your mark in commercial applications, then you will want to file an in-use trademark application, which is reserved for marks already in use. Waiting until you are already selling your product to apply for a trademark is a bit risky. If you’re lucky and there’s no problem, then you’ll receive your trademark.
But if it turns out you’ve run afoul of another company’s trademark, or you’ve chosen a generic or descriptive mark that can’t be trademarked, then you’re stuck. Regardless of how much time and money you’ve invested in your marketing efforts, you’ll likely have to rebrand after entering the market. This is not only dispiriting, but incredibly costly, as any brand recognition you’ve built up will be lost.
Whenever possible, I advise clients to take a more proactive approach to their trademark efforts. This leads us to the second option.
Option 2: File an intent-to-use trademark application.
An intent-to-use application is an invaluable tool if you’re in the early stages of product development, and are not yet using the mark in commerce. Filing an intent-to-use application is helpful because the USPTO will inform you if the trademark is valid, or if there are problems to be addressed. This allows you to rebrand your product before you start spending valuable marketing dollars and building public awareness.
However, after you’ve filed an intent-to-use application, you will have to pay a maintenance fee once every six months to keep ‘dibs’ on the mark, and the mark will expire after three years. If you start using the mark for commercial purposes within the three-year time frame, you will have to file a “declaration to use,” which requires the payment of another fee.
Filing for and maintaining intent-to-use marks is more costly than obtaining an in-use trademark after you’ve started selling your product. However, the cost of a potential rebrand significantly outweighs these costs. This is why I always advise clients to take the second route if it’s at all economically feasible.