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 can be filed before the company has started selling. If the mark registers on the Principal Register, the filing date counts as nationwide constructive use of the mark for the registered goods or services, except against anyone who has not abandoned their mark and who, before that date, had used it, had filed a US application for it that is pending or registered, or had filed a foreign application giving a right of priority and then timely filed a US application that is pending or registered (15 U.S.C. § 1057(c)). Filed applications appear in the USPTO's public search database, so filing discloses the name. For startups in stealth mode, we recommend filing before the public announcement.

Yes. A US intent-to-use application can be filed before a startup has begun selling products or services. If the mark registers on the Principal Register, the filing date counts as nationwide constructive use of the mark for the registered goods or services, except against anyone who has not abandoned their mark and who, before that date, had used it, had filed a US application for it that is pending or registered, or had filed a foreign application giving a right of priority and then timely filed a US application that is pending or registered (15 U.S.C. § 1057(c)). Before registration issues, the applicant must establish use in commerce through an acceptable amendment to allege use or Statement of Use. After a Notice of Allowance, the Statement of Use is due within six months. Timely extension requests filed with the USPTO, with the required fee and a verified statement of continued bona fide intention to use the mark, can extend that period; extensions after the first also require good cause, and the total period cannot exceed three years from the Notice of Allowance. Canadian CIPO applications can also be filed before use.

A domain name and a trademark are separate systems. 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. We recommend a professional clearance search of the USPTO database and related registries before you commit to a name.

Yes. Each application identifies the goods and services for the mark, and the classification follows those goods and services; one application can cover several classes, with a fee for each class (37 C.F.R. § 2.6(a)(1)). Class numbers exist for USPTO administration and do not limit or extend your rights (15 U.S.C. § 1112). Individual product names are registered for the goods or services each product covers. We recommend filing for both the company name and the primary product name, particularly if the product is the company's primary commercial identity.

If a founder filed a trademark application in their own name before the company was formed, we recommend assigning it to the company once the company is incorporated, by a written assignment recorded at the USPTO. A registered mark or a mark under application is assignable with the goodwill of the business in which it is used, and assignments must be in writing. Before an amendment to allege use or a statement of use is filed, an intent-to-use application may be assigned only to a successor to the applicant's business, or the portion of it to which the mark pertains, if that business is ongoing and existing (15 U.S.C. § 1060(a)). Until the assignment is completed, the individual rather than the company owns the trademark, which leaves a gap in the chain of title.

Without a federal trademark registration, your rights are common-law rights, which the USPTO notes you may only be able to enforce in the areas where you use the mark if that use covers less than the entire country. 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 does not eliminate that exposure: if the mark registers on the Principal Register, the filing date counts as nationwide constructive use of the mark for the registered goods or services, except against anyone who has not abandoned their mark and who, before that date, had used it, had filed a US application for it that is pending or registered, or had filed a foreign application giving a right of priority and then timely filed a US application that is pending or registered (15 U.S.C. § 1057(c)).

The USPTO refuses registration on the Principal Register of a mark that, when used on or in connection with the applicant's goods or services, is merely descriptive of them (15 U.S.C. § 1052(e)(1)), unless the mark has become distinctive of the applicant's goods or services in commerce (15 U.S.C. § 1052(f)). The USPTO may accept proof of substantially exclusive and continuous use as a mark for the five years before the claim of distinctiveness as prima facie evidence that the mark has become distinctive. We recommend choosing a suggestive or arbitrary name instead of one that directly describes the product.

The Madrid Protocol is an international trademark system administered by WIPO that allows a single international application to designate multiple member countries. The international application must be based on a trademark you have already applied for or registered with your office of origin, such as a US application or registration. The IP office of each designated member examines the request for protection under its own domestic law. I advise on country selection and timing.