Question: I'm planning on opening an e-commerce store, and have come up with a word that I am pretty sure has not been used before. I want to use the word on my labels, marketing and on some merchandise. I was told that it can take up to 4 years to have a trademark registered, which I was surprised to learn. While I am waiting to get my trademark registered, should I avoid using that word so that someone else doesn't also start using it once they see it? Or would my date that I filed my trademark application give me rights in the word so that I would have a claim for infringement if someone else started using it?
Answer from Jessica: Unless there is a big issue with your trademark, it will not take 4 years to secure your mark. In my experience, when I spend the time up front with my clients doing research and proper analysis of the research, my clients rarely wait longer than 8-12 months to get their registration.
But you don't have to wait that long to use the mark. In fact, "use" is what gives you priority rights in the mark -- assuming it isn't already being used by someone else, which is why you need a good Trademark attorney - to help you figure that out before you put too much time and money into branding with the trademark you want to use.
The first thing you need to do is have an experienced trademark attorney do "knock out" research to make sure the word you want to use really is available to you. That is something a good trademark attorney can do very quickly for you, so it won't slow down your momentum much. I always provide that service for my trademark clients who are in the process of just starting their business. It can save a lot of frustration and expense, and will help you avoid problems by making sure a mark is available to you before you start using it (and spend the money on branding your labels, hang tags, website, marketing materials, etc...).
If the word appears from the knock out research to be available, you can have your trademark attorney begin the deeper dive into the research and then prepare your application. While "use" gives you priority rights, getting on file quickly gives you that name reservation you are hoping to have because it puts you at the front of the line with the USPTO for that word (in your industry). That is important because it then puts others on notice that you are claiming a trademark, and prevents them from filing first in the same or confusingly similar name, and pushing you into a dispute (even disputes you stand to win can be expensive and disruptive before they are resolved).
Taking steps to protect your trademark rights fully through use AND filing for registration is the best course of action to create a strong foundation upon which to build your brand and business.
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