Trademark Attorney for Startups

The ideal time to file is before the round, not during it. A pending trademark application filed before due diligence begins gives investors a clean IP picture. Filing during due diligence is possible but signals that IP was reactive rather than planned. Filing after the round closes is common but means the trademark portfolio lagged the company's growth. For pre-seed startups, filing as soon as the brand name is decided and the clearance search is clean is the recommended approach.

A Series A investor's counsel typically searches the USPTO database for registered and pending trademark applications on the company name and key product names. They look for the existence of a registration or pending application, the chain of title (who filed and who owns it), any adverse marks that could create infringement exposure, and any abandoned prior applications under the same or a similar name. A clean trademark file has a pending or registered application in the company's legal name with correct assignment records.

An intent-to-use application at the USPTO establishes a priority date before the company has started selling. That priority date means any party who files a similar trademark application after yours is filing later than you. The priority date becomes relevant if a conflict arises with a party who claims the same name: your filing date is the legal stake in the ground. For startups in stealth mode, filing before the public announcement prevents a competitor from claiming the name after they see it.

Yes. A US intent-to-use application allows a startup to establish trademark rights before it has begun selling products or services. The application secures the priority date and must be converted to a use-based application before registration issues, by submitting proof of actual use in commerce. The USPTO allows up to three years from the Notice of Allowance to submit the Statement of Use, with extensions available. Canadian CIPO applications can also be filed before use.

A domain name and a trademark are separate systems that do not inform each other. A domain registrar checks whether the exact domain string is taken; it does not search the trademark database. A name that is available as a .com domain can still be registered as a trademark by a third party in your industry who filed before you. The only way to assess trademark availability is a professional clearance search of the USPTO database and related registries. Many startup names that clear the domain search fail the trademark search.

Yes. A company name trademark and a product name trademark are separate registrations in separate classes. The company name is typically registered in the business services class that matches the company's primary activity. Individual product names are registered in the goods or services class that matches each product. Many investors expect to see trademark applications on both the company name and the primary product name, particularly if the product is the company's primary commercial identity.

It is common for founders to file trademark applications in their own name during the early stage before the company is formed. Once the company is incorporated, the trademark should be formally assigned from the founder to the company via a written trademark assignment recorded at the USPTO. Failing to complete this assignment leaves the trademark owned by the individual rather than the company, which creates a gap in the chain of title that investors and acquirers will flag during due diligence.

Without a federal trademark registration, your rights are common-law rights limited to the geographic territory where you actively operate under the name. A party operating under the same or a similar name in a state where you have not yet expanded may have established common-law rights in that territory. When your startup enters that market, the local party may have a claim to stop you. Federal trademark registration from the USPTO establishes nationwide priority from the filing date, eliminating that geographic exposure.

Descriptive marks are among the most difficult to register. The USPTO refuses marks that merely describe the goods or services they identify. A startup whose name directly describes its product (like 'Fast Shipping' for a logistics company) will face a descriptiveness refusal. The alternatives are: choose a suggestive or arbitrary name that can be registered more easily, or establish that the descriptive name has acquired distinctiveness through long use and consumer recognition. The latter requires substantial evidence and time.

The Madrid Protocol is an international trademark system administered by WIPO that allows a single international application to designate multiple member countries. It is cost-effective when a startup needs coverage in four or more countries simultaneously. For funded startups with international go-to-market plans, a Madrid filing made after the US application is filed (or registered) is a common next step. The application designates each target country, and each country's trademark office examines it under local standards. I advise on country selection and timing.