Timing is of the essence in establishing priority to a trademark rights a word, logo or slogan as associated with a seller’s goods or services. Given the importance of priority in trademark law, understanding the various methods of establishing trademark rights in the United States provides an advantage to technology startups and entrepreneurs racing to the mark.
Whether a product or service is in development, preparation, or in the marketplace informs the timing and scope of protection of trademark rights. Regardless of stage of development, trademark protection is available to any person who meets use-in-commerce requirements under common law or under the 1946 Trademark Act.
Establishing Trademark Rights Through Common Law
Use of a trademark in commerce vests common law rights in the mark corresponding to the scope and territory of use. In other words, trademark rights are acquired as the mark is actually used in connection with the goods or services in a bona-fide way to sell the goods and services of the trademark owner. (See New West Corp. v. NYM Co. of California, 595 F.2d 1194 (9th Cir.1979)).
But entrepreneurs and tech startups by nature may not have a product or service ready when seeking trademark protection, and therefore may not be able rely on common law trademark rights even though they may be engaged in product development.
Establishing Nationwide Trademark Rights Immediately Without A Ready Product or Service
The United Patent and Trademark Office Intent-To-Use filing option vests in trademark applicants immediate nationwide trademark rights to the mark, provided a variety formalities and subsequent legal obligations are later met within the statutory framework of the Trademark Act.
Under Section 7(c), an Intent-To-Use Federal Trademark Application constitutes constructive use-in-commerce as of the filing date of the application without the need to have product ready for market at the time of filing, provided, a showing of bona fide use in commerce is later filed within the statutory deadline of 36 months. (See Title 15, United States Code, §1057).
The advantages provided under Section 7(c) are significant for technology startup ventures seeking to establish and protect trademark rights as early in time as practical. The alternative, waiting to roll out product and establish common trademark rights, carries too much risk for a venture seeking to attract customers to a new brand.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David has been recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal. Office: Ph: 310-751-0181; david@latml.com.
The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2017. All rights reserved.
