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[Intellectual Property] First, Use in Commerce

- an unofficial opening statement

· Copyright,Trademark,Entertainment Law,Startup,Music Law

I practice entertainment law and intellectual property law in New York City, and a typical week of mine usually involves answering all sorts of questions related to the arts and entertainment business. Here, I would like to share my thoughts on some of the common issues that we may encounter during our daily creative or business activities.

An owner of a piece of intellectual work usually talks about three concerns –

a) how to retain all intellectual property rights contained in the work to the maximum extent permitted by law;


b) how to commercialize the work to the maximum extent permitted by law; and

c) one’s specific financial needs in such a transaction.

To obtain all titles in a piece of intellectual work, the owner’s best course of action is to first obtain all intellectual property rights contained within the work, which potentially includes an assignment of copyright, trademark and patent (or a written clarification, in some instances) so that the title of the work is cleared. Then the owner should protect such work by applying for a copyright registration (and a trademark registration, if one intends to commercialize the work) with an attorney*.

For example, a typical way to commercialize a piece of artwork is to make clothing and accessories, based on the artwork, for sale. A trademark for the clothing/accessory brand in International Class 025 is typically needed for this kind of sales activity.

Interestingly, many trademark applicants would be confused by the requisite “use in commerce” of a trademark. I have noticed that many startups would first launch their social media accounts or blogs along with their brand names to promote their upcoming products and services while the actual transactions have not yet been made available for purchase. So, to which point on the timeline are the brand names as being deemed “in use in the U.S. commerce” and therefore protected by the law? This is such a crucial question to answer since a trademark examining attorney would have certain discretion in determining such status, based on the evidence gathered. Companies sometimes spend tens of thousands of dollars on debating such status, because the person (or entity), who deemed to have first used a trademark in the U.S. commerce, is ultimately entitled to this trademark, prevailing over all other owners who own or use other (confusingly) similar trademarks.

In many other countries, such as in China, the person (or entity) who first filed a trademark with the national trademark office would be entitled to priority of the trademark over later filers. In the U.S., however, the first user of a trademark would have priority of the trademark over later users. But, if a trademark is filed later by a senior user with priority, be prepared for a litigious process with the Trademark Trial and Appeal Board (TTAB), before the senior user’s trademark becomes eligible for registration with the U.S. Patent and Trademark Office (USPTO).

2020 is a particularly challenging year for every one of us. Among many others questions, here are the two things I think about when creating this law blog, Silvia Legal Discoveries:

  • How to best commercialize intellectual work so that more creative people can afford pursuing their passions?
  • How to mitigate the cost in presenting local arts and creative works in culturally and economically different platforms?

I invite you to join me in the search for the answers, my fellow creatives.

At last, I would like to quote my favorite philosopher, Friedrich Nietzsche, that “[w]e possess art lest we perish from truth[,]” and “[w]ithout music, life would be a mistake.”

Sincerely yours,

Silvia Sun, Esq.

Copyright© 2020, Xiaoyun Sun. All rights reserved.

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