By: Caldwell

Inevitably, whether it be while launching a startup, working on a product, or during a marketing meeting, the question will come up as to which to file first:  a patent or a trademark.   Not surprisingly, the answer is that it depends.  What to file, where to file, and how to file are strategic business decisions that depend on a variety of factors.

The Purpose of Patents and Trademarks

 To make an educated decision on whether to first file for a patent or trademark, business owners, individual inventors, and research teams must understand the protect each form of intellectual property protection offers. Take, for example, an inventor that has developed a cure for the common cold and has decided to market the product by its brand name “NoMoreAchoo”.  In such an instance, a patent could be sought to protect the inventor’s cure for the common cold (the invention) from use by others without the inventor’s permission.  This can be visualized as building a white picket fence around your invention that no can cross without asking the inventor for permission.

A trademark differs from a patent in that it protects the brand name (NoMoreAchoo) regardless of whether a patent is also filed.  In other words, a trademark is agnostic to how the patent is used and instead protects the words, slogans, colors, sounds, etc. that identify the source of goods or services, such a brand name.

Another major difference between the two forms of protection is that for a trademark to be valid, it must be actively used in commerce, whereas a patent does require use to be valid.  In the example of “NoMoreAchoo”, a patent for a cure to the common cold may be obtained without actual use of the invention; the inventor can still protect his or her invention by bringing claims in court for anyone infringing the inventor’s rights to the patented cure.  In contrast, for a trademark on “NoMoreAchoo” to be valid, “NoMoreAchoo” must be used in commerce such as through the sale of the product to consumers—for example, by using “NoMoreAchoo” on the product labeling for the cure.

Timing of Filing – Strategic Considerations 

A decision maker may be influenced by many factors in deciding to file a patent before a trademark.  First, if the invention directly solves a problem that affects a significant number of people (like the common cold), the inventor may find it beneficial to file a provisional patent application first. By doing so, the provisional patent establishes a priority date for the invention at the patent office.  A year from this filing, the provisional application will need to be converted to a non-provisional application. This non-provisional application will go through examination so that it may eventually be allowed and issued.  Further, if the product is to be commercialized, a trademark application can follow at any time. Remember that for a trademark to be enforceable, it must be used in commerce.

The timeline for patents and trademarks at the United States Patent and Trademark Office is also important to note. From the time a patent application is filed to the potential grant may take two or more years.  In addition, trademark applications are typically assigned to an examiner within three to five months and can take several more months to make their way to registration. For both patents and trademarks, submitting applications should be done as soon as possible to ensure the earliest priority date. These timelines may also be important to investors as they consider the value of intellectual property assets as part of the total value of a business.

Other Considerations

Cost can also be a factor that may move the needle one way or the other.  Patents present a greater monetary investment while trademarks are comparatively less expensive.  Comparing the two, patent costs can be several times the cost of trademarks.  Because the financial barrier to entry is lower for a trademark, trademarks can be appealing to a wide variety of businesses and startups regardless of whether they plan on filing a patent. At the same time, trademarks make an excellent addition to patents to increase the overall intellectual property protection of product or company and its appeal to investors or potential buyers.

Regarding patents, having either an allowed patent or an application filed and in prosecution could help increase interest from potential buyers. Using the example “NoMoreAchoo”, if there is an allowed patent on this cure for the common cold, the patent is presumptively valid. This could potentially increase the value of the invention to others, making it another strong consideration when deciding on a strategy to protect intellectual property.

Because every business has different needs and goals, there are always a variety of factors to contemplate in order to make a strategic decision as to which form of intellectual property protection to file, and when to file it.  Partnering with a team of intellectual property experts can help in designing a strategic plan that fits with specifics of the business.