Should we have trademark filed before we start spending on marketing material?

Today I spotted interesting topic at INTA (International Trademark Assotiation) mailing list which correlated with one of most recent cases we were involved with.

Q: We have a trade show coming up where we will launch our new product. In anyone’s advice do you suggest we time it so that the trademark is filed only say a few days prior to the show in order for it not to be picked up by a competitor on the USPTO site. Or, on the other hand to be safe, should we just have this filed before we start spending on marketing material etc.

My colleague Susan Crane replied:

…I would file as soon as possible. You do not want to run the risk that a mark is clear today, you wait until a
tradeshow to file the applications, and in the meantime, someone has filed a confusingly similar application.

I agree with Susan. Here is a most recent case which confirms this point of view (I’m speaking of Russian trademarks, but anyways…)

On January 17th we got a request from New York advertising agency who needed a search conducted to see if an advertising tagline has been trademarked in Russia in 2 classes.

Regular search of Russian trademark database brought in exact match, BUT it turned out what the mark expired 6 months ago.
However, we strongly advised our client not to limit search to registered marks only, and search Russian trademark applications as well (they’re unavailable at RUPTO online for searching but we maintain our own database). Results were unassuring – on December 20th (that is less than 30 days prior to receiving inquiry from out client) that mark was filed again (by the same company)…

So, as you can see, our US client might have had a good chance to snap the mark if only they thought of it a little bit earlier – to my mind, you’d better file the application as soon as possible.

BTW, in Russia it’s tougher than is US – our client had a real good chance to get the mark despite the fact that it was already in use – Russia uses the “first-to-file” policy.
– No evidence of use is required upon filing of a trademark application.
– The rights to the mark will belong to the person who files the application first…even if a mark was used for a long time in Russia by another company.

PS I came across (via Sphere) Seattle Trademark Lawyer blog – Michael Atkins published an overview (1st part actually) of Foreign Trademark Law Blogs. He points out that there’s a wealth of trademark law information out there, and it’s not limited to materials written in English. and tells about couple of translation websites he uses to read those foreign blogs. I’ve been using translations websites for these very purposes over a course of years, too, and totally agree with Michael that foreign resources (in my case non-Russian) help to spot developments that may have gone unnoticed and highlight resources that allow for additional investigation. I’ll be looking forward for Pt.2 of the overview.

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