Technology startups often start thinking about marketing early in the company formation and product development process, sometimes before a product is even finalized. When an idea for a brand name emerges, i.e. what to call the product, understanding the fastest and most practical way to establish trademark rights becomes critical. Under U.S. Trademark Law, the party who first establishes its trademark rights has priority and therefore superior rights to all subsequent users.
To establish trademark rights, the legal requirements of use-in-commerce and priority rights in U.S. trademark law must be understood. These complex and highly-rule based principals govern how a company can first establish trademark rights through common law, or through the United States Patent and Trademark Office (USPTO). Understanding best practices in these areas of law as applied to tech startups provides an advantage to entrepreneurs seeking to maximize and protect their trademark rights and claim the earliest feasible priority date.
The 1946 Trademark Act defines use-in-commerce as any use “in the ordinary course of trade”, however, this standard varies by industry and is even more abstract for technology based products and services. Complex considerations as to the scope and territory of use that is required to meet the minimum requirements of use in commerce under the United States Patent and Trademark Office rules, the Trademark Act, or, under common law in various states can inform the product launch and promotion strategy of tech startups, and the federal filing strategy in the USPTO by an experienced trademark or technology lawyer.
Tech startups racing to claim priority over a brand name, a logo, or a slogan must act to claim and protect these identifiers as trademarks, or risk losing otherwise protected intellectual property to third parties in the open market. Because priority is established only when the first use of the mark in commerce is proven under law, understanding what actions constitute use and do not constitute use in commerce may be critical to strategic trademark protection and federal trademark filing strategy for tech startups.
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.
