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Many sellers, faced with the goal of filing a US trademark application, have pondered the question: Should I wait for my first sale, or should I go ahead and apply?
The short answer is that each option has its advantages. Here’s how it works:
Sales are required at some point in the trademark application process to complete the registration.
You will need to show the US Trademark Office (USPTO) that you are selling products under your brand name in the US as a condition for your trademark to register.
How to Provide Proof That You Are Using the Brand to Sell Your Products
To show the USPTO that you are selling products, you can usually do this with either a screenshot of an active selling page featuring the brand, such as an Amazon listing, or a photo of the product or packaging showing the trademark. This evidence of use is called a specimen, which the USPTO will review and must approve before allowing your mark to register.
When Do I Need to Submit a Specimen to the USPTO?
You can submit a specimen to show use of your brand either:
1. At the time of filing your US trademark application if you have already started selling products under your brand. This is called filing your trademark application under ‘Use in Commerce.’
OR
2. After your trademark application is filed and the USPTO issues a Notice of Allowance, which takes about 10-12 months from filing. You will then need to submit a Statement of Use to satisfy the specimen requirement so that your mark can register. Thus, if you choose this option, you can submit your trademark application and then have additional time to start selling your products and provide evidence of use. This would be filing based on ‘Intent to Use.’
Do I Need to Wait for a Sale to Enroll in Amazon Brand Registry?
We previously covered the advantages of Brand Registry enrollment.
For Brand Registry enrollment, it doesn’t matter if you wait for your first sale or apply for a trademark before you have any sales.
You will be able to apply for Brand Registry enrollment within approximately 4-7 days from the date of filing your trademark application with the USPTO. Many Amazon sellers choose to file their trademark applications based on ‘Intent to Use’ so that they are already enrolled in Brand Registry when they are ready to launch their product.
Another advantage of filing based on ‘Intent to Use’ is that your application could be cited by the USPTO as a reason to refuse registration of a conflicting trademark application filed after yours. This is assuming the USPTO regards your mark as confusingly similar to the ‘competing’ mark filed later.
What Are the Advantages of Applying to Register My Trademark After I Start Selling?
Applying after you have sales means a faster registration process and eliminates additional official fees for filing a Statement of Use:
If you file your trademark application after you’ve started marketing products under your brand, you can fulfill the specimen requirement at the time of filing. This means you will not be required to submit a Statement of Use separately since this requirement will be fulfilled along with your application.
This will shorten the timeframe from filing to registration since the USPTO will not issue a Notice of Allowance. Instead, your mark will proceed to register approximately 3 months after the publication date. This can be especially beneficial if you are dealing with hijackers (counterfeit sellers), in which case you will need a registered mark to enforce your rights and remove the hijackers.
It will also save you additional costs of USPTO official fees for each class of products for which you need to submit a specimen.
A disadvantage of filing after you start selling is that you may need some time before you are ready to launch your product. In the interval, competing marks that are similar in both name and goods could be applied for with the USPTO and, in turn, block your later-filed application from registering.
To conclude – Is Waiting for Your First Sale Before Trademarking a Wise Move?
At some point in the trademark application process, you will need to show the USPTO that you are using your brand to sell products in the US. Filing before you have any sales may be appropriate if you are an Amazon seller seeking quick Brand Registry enrollment, or in case you are being diligent in preventing similar marks from registering by filing your application first.
On the other hand, filing after you start selling will shorten the time to registration and help remove hijackers faster upon registration.
It is recommended to consult with a US trademark attorney to ensure the trademark application process is handled correctly, along with the specimen filing.”
