Use in Commerce and Priority of Trademark Rights in the United States

Much like in innovation, when it comes to establishing trademark rights in the United States, timing is of the essence. During early stages of the technology startup process, perhaps even in the idea-stage, entrepreneurs reach the point of naming their product or service, and, almost instinctually, seek to protect that name or slogan against future infringing use using trademark rights.

Trademarks protect brand names, word, symbol, logos, slogans or even jingle and product shapes as long they identify the source of goods or services provided to the public. In the United States, trademarks are protected under the 1946 Trademark Act, as well as common law.

Trademark Priority

Before protecting a trademark going forward, trademark protection requires looking back for potentially conflicting trademarks because if two trademarks are found to be confusingly similar, the cornerstone of trademark infringement, the party who was first to establish and maintain trademark rights will be deemed the exclusive owner of the trademark rights at issue. Establishing trademark rights in the United States thus relies as much on priority, as it does on distinctiveness.

Establishing Trademark Rights

Since 1989, there are two ways to establish trademark rights in the United States, both of which require on using the mark in lawful commerce. The first date that bona fide use in commerce can be legally shown, is the priority date of the mark.

There are thus two separate ways to establish use-in-commerce, one through actual use under common law, and the other through constructive use under the Federal Trademark Application filing system in the United States Patent and Trademark Office. Meeting the legal requirements for either type of use establishes trademark rights and claim of priority to the mark as of the date of that first use.

Entrepreneurs, innovation teams, and technology startups seeking to protect their brand usually understand the importance of priority rights and confidentiality when it comes to protecting their ideas and inventions at early stages. Because different forms of intellectual property are formed and protected under different policies and laws in the United States establishing the first use-in-commerce, one way or another, and therefore establishing priority can be the determinative factor in owning a trademark.

David N. Sharifi Technology lawyer and trademark litigation attorney Los Angeles and Beverly HillsAuthor: 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;

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. 

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