Is there a best time to file a trademark application?

When is the best time to file a trademark application?

My newly launched brand is not well known yet, so I’m thinking of registering my trademark when it is a little more famous. Still, it’s not too late, right?

It may not be too late, but the longer you delay in filing the application, the more risk there is. We recommend that you apply for a trademark “as soon as possible”.

“When should I file a trademark application?” is one of the most frequently asked questions we receive.
In fact, there is no clear answer that applies to all people and companies, and we answer that “as soon as possible is better”. Let us explain why.

There is no “when must I register my trademark” rule.

A trademark can be applied for and registered for goods or services even if it has been in use for several years or more, even before it is used.
No rule says “You have to file an application by when the time from you start selling the product” or “You have to file an application by when the time from you start providing the service”.
Essentially, you can file an application at any time.

So, what are the reasons why it is “better to file a trademark application as soon as possible”?

First-to-file

The Japanese trademark system is based on the “first-to-file” principle.
In principle, the first applicant to file an application for trademark registration with the Japan Patent Office is granted trademark rights. In other words, the first to file wins.
An identical or similar trademark for which an application is filed later cannot be registered.

Under the first-to-file system, it is not acceptable to say “We were the first to use that trademark.”
Therefore, we answer that it is better to file a trademark application “as soon as possible,” but we would also like to introduce when “as soon as possible” is the right time.

What is the “as soon as possible” timing?

(1) It would be ideal to file a trademark application before the start of sales of the goods or services in question, or even when you have narrowed down your naming candidates to one or two.

If a situation arises where the trademark is found to be someone else’s registered trademark after the product package or advertisement has been prepared for sale or after the product or service has been sold, all of the prepared commercial materials will no longer be available, resulting in extra time and expense.

(2) It is never too late to file a trademark application as soon as possible after the start of sales.
After sales have begun, other companies will take notice of your trademark as it becomes more well-known, so it is best to file your trademark application before they file theirs.

(3) However, a trademark is assumed to be used. If a registered trademark has not been used for more than three years, there is a possibility that a third party will cancel the registered trademark (request for a trial for cancellation of non-use).
Even if a candidate name has been narrowed down, it is important to determine the timing of the actual provision of the product or service, if it is undecided or will not be available for some time in the future.
It takes approximately six months to one year from the filing of a trademark application to its registration, so consider this time frame as well as the optimal timing for filing a trademark application.

Risks of missing the timing (or Not filing an application for trademark registration)

If you do not file an application for trademark registration after the timing described in (1) and (2) above, the following risks are possible.
In light of these risks, it is best to file an application for trademark registration as soon as possible.

●Increased risk of imitation

The risk of imitations increases as people try to “free ride” on a trademark that has brand power and credibility. Imitation damages not only the company’s own profits, but also those of its customers.

●Risk that a third party will register the trademark first and you will no longer be able to use it

You will not be able to use the trademark to manufacture or sell products or provide services. You may be forced to change the name of your products or recall products you have already sold, or you may be sued for damages.

So if these risks are discovered after the brand has grown, it’s going to cost you a lot of extra money. I see what you mean about the earlier the better.

Trademark Search

Whether you file a trademark application before or after sales begin, it is strongly recommended that you conduct a preliminary search to determine if your candidate name can be registered as a trademark.

If the name is identical or similar to a trademark that has already been registered by a third party, not only will you not be able to use the name, but you will also be infringing on the trademark right. To prevent such a situation, it is strongly recommended to conduct a trademark search before filing a trademark application and before starting to use the trademark.

If the search reveals identical or similar trademarks, the following actions should be taken.
– Change the trademark (naming or logo).
– File a request with the JPO for a trial for cancellation or invalidation of the found prior trademark registration.
– Obtain a license from the trademark owner.

Summary: The sooner you register your trademark, the better!

You can file an application for trademark registration at any time. In other words, it is possible to register your trademark after you start selling products or providing services, but now you understand why you should register your trademark as soon as possible.

If you are unsure about the timing of your trademark application, please feel free to contact us. Our patent attorneys specializing in trademarks will be happy to assist you.

We will also proceed with the application procedure as soon as possible after receiving your request from Amazing DX, and we would be happy to help you file your trademark application as soon as possible.

⇒ Start using Amazing DX