Once you're in the mindset of building an IP portfolio, sometimes it's easy to get carried away and go overboard with filing applications. I've seen applicants file trademark applications, patent applications, and copyright applications all at the same time for the same product/invention or for the same line of products/inventions. While it may be convenient (and maybe satisfying) to file everything at the same time and get applications out of the way and over with (for a while), it is important to time applications right.
Timing the filing of applications allow applicants to: 1) budget wisely; 2) manage workload during prosecution; 3) coordinate approximate publication dates, issue dates, and registration dates; 4) strategize product/service launching; 5) coordinate funding; and 6) prioritize needs vs. wants.
Take patents and trademarks for example. Most patent applicants have names for inventions that they will use when selling the inventions in commerce. As you may know by now, trademark applications, not patent applications, protect names of goods and services. So naturally, many patent applicants are also interested in receiving trademark protection, and they are eager to file an application or two, right when they file their patent application. But is this the best time? Maybe.
On average, I would say that patent applications take about three years from the time a nonprovisional patent application is filed to register. (Design applications may take less time because they are generally easier to prosecute.) In contrast, trademark applications take about ten months from the time a trademark application is filed to register. As you can see, there is quite a bit of time difference between when a trademark application could register and when a patent application could register. If we are to assume that both of my hypothetical applications would eventually register, then the trademark application would register much sooner than the patent application. This much of a difference in time that applications take to register may be something to consider if you prefer to register your patent and trademark applications around the same time (in the ball park).
Additionally, it is important to remember that trademark owners have common law rights. In contrast, there is no such thing as common law patent rights, and inventors/patent applicants have more deadlines to consider to prevent premature loss of patent rights. Trademark owners can use the trademark in commerce indefinitely without a trademark registration and still receive some rights. Inventors/patent applicants, on the other hand, must file a nonprovisional patent application within a year of filing a provisional patent application or disclosing their invention to the public. This means, filing a trademark application is generally less pressing than filing a patent application.
Yet another thing to consider is what happens once patent applications and trademark applications are allowed for registration. When patent applications are allowed, applicants pay their issue fee and wait for their applications to be processed for registration. Once registered, applicants (now "registrants" from this point forward) are free to practice their patents or not. In contrast, by the time trademark applications are allowed, applicants must show that the mark is used in commerce (either in the application if filed under 1(a) or via SOU if filed under 1(b)). This means, once registered, trademarks must be used. The reason for this is because trademark rights in the US is based on usage.
Accordingly, if you've just filed a provisional patent application, and you are still perfecting your invention or figuring things out before filing the nonprovisional, then right now may not be the best time to file for a trademark application, because you're not going to be selling your invention by the time your trademark application registers. Instead, it may be best to file a trademark application when it is almost time for product/service launching.