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Posted August 1, 2014
With trademarks, older is better. Be prepared to prove your trademark’s age.
If you are in business, you probably own one or more trademarks. A product or service name usually is a trademark, and usually a business name is a trademark too.
You might get into a dispute with another business over who began using its trademark first. When that happens, the matter usually is settled by both parties exchanging evidence as to who the first user of the trademark was.
Whoever turns out to be the second-in-time user of a trademark usually must stop using the trademark. The other side has what trademark law calls “priority.”
If you have not kept any proof of your initial usage of your trademark, you may not be able to prove the earliest days of your usage and, thus, you increase your chance of losing the argument over who began using its trademark first.
Make Certain You Are First
Before you commit to a trademark, hire an attorney to perform clearance research to make certain you will be the first person to use it for the same or similar goods or services. It would be a shame for you to invest money and effort to establish a trademark that someone else could force you to change later.
What Should You Preserve?
Generally speaking, you have begun using your trademark when you first achieve a sale of the relevant goods or services under the auspices of a trademark.
So, for example, if you make and sell cars, and if you adopted a unique trademark for your business, the first date of use of your trademark likely would be the day upon which you sold your first car while using the trademark. The same principle applies to services.
Proof of your first usage of a trademark often consists of copies of the sales literature (in the case of services) or a specimen of the goods themselves (or photographs of them) showing the trademark embossed on the goods or the packaging for the goods.
Coupled with that, you should preserve purchase orders, invoices or similar sales documents demonstrating the dates of your first several sales of the branded goods and services.
You should create a special file for preserving this evidence − effectively, a time capsule. Consider adding personal notes as to what the first sales were if the literature and sales documentation doesn’t tell the full story.
Store this file in a safe place. You may not need this information for years, perhaps decades. Others in your organization should be able to find this information and understand its significance if you should disappear from the scene.
If you serve more than one geographic market, then you should create such evidence-of-first-use files for each independent geographic market you serve. That’s because common law (unregistered) trademark rights are earned on a market-by-market basis.
For example, you might have begun selling your wares in Richmond in 1995 and in Roanoke in 1998, so that your common law trademark rights in Richmond would date back to 1995 and your rights in Roanoke would date back to 1998.
Also preserve any advertising or publicity that predates your first sale of the branded goods or services − specifically anything that contains your new trademark and describes your coming goods or services.
For example, you might have started a Facebook page, Twitter account, or website to tout your coming new business. Perhaps the newspaper ran a story about your coming business. Preserve evidence of those first marketing efforts. In a close case, those pre-sale marketing efforts might make you the winner.
The best way to establish your trademark’s priority is to federally register it. When you do so, you get nationwide priority rights that start on the date you file your application, assuming it’s eventually granted.
In fact, you can file what’s called an “intent-to-use” application, and get nationwide priority starting on the date that you file your application even though you won’t get a trademark registration until you later prove your usage of your trademark to sell goods or services.
Even if you get your trademark registered, you still need to do the record keeping described above. Even though getting a federal registration will entitle you to certain favorable legal presumptions in a trademark fight, you might still need that proof of when you first started using your trademark to win the priority fight.
Some say records are made to be broken. Here, the party without records might be the one eventually broken.
Written on July 23, 2014
by John B. Farmer
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