When First Does Not Always Win

Business owners often create and develop brands only to later find out, either through a cease and desist letter or a lawsuit, that they cannot use the brand. This could be because another company has a registered trademark or the company claims that they were first to use the brand name. Either way, defending a brand proves to be an expensive learning curve for a lot of entrepreneurs.

Brand names are protected by trademark rights. The United States follows a first to use system for trademarks. Kanye West is currently in a legal battle over the use of his brand “Yeezy” for clothing. Kanye West’s holding company, Mascotte Holdings, Inc., owns trademark registrations for “Yzy” and “Yeezy”. “Yeezy” for shoes, footwear and sneakers was registered as a trademark in January, 2017, claiming a date of first use as February 2015. This means that his company has held trademark rights in “Yeezy” since February 2015 even though the mark was registered only in 2017.

His company filed another trademark application for “Yeezy” for clothing in August 2017 on an intent-to-use basis. This application was suspended by the USPTO until determination of another pending application for “Yeezy Boost” filed on an intent-to-use basis for clothing by a Chinese company, Fujian Baby Network Technology Co., in June 2017. Now, both applications were filed on an intent-to-use basis which means that both companies intend to use the mark in the future for those particular products. So who would get priority in this situation?

The Chinese company was the first to file, but remember that Kanye West’s company has a trademark registration for “Yeezy” for shoes, footwear and sneakers claiming first use in 2015. The Chinese company’s application is being refused registration because it is confusingly similar to, among other marks, Kanye’s “Yeezy’ trademark registration. But Kanye’s trademark application is suspended because the USPTO needs to wait for the Chinese company to respond to the refusal and make a final determination whether “Yeezy Boost” will be registered or not.

This is all very confusing and time consuming, right? How is it that even though the Chinese company was first to file, that it’s trademark application is being refused registration? In this situation, Kanye West’s company will eventually prevail and get trademark rights because it was the first to use the mark.

As a business owner, before you invest time and money in buying a domain name, and promoting your brand on social media, get a trademark registration. You need to do a comprehensive search, not only on the USPTO database, but also in all states, social media profiles, domain names etc. Once your trademark is registered, others will have a tough time challenging it.  

At Nupur Shah Law, we help business owners and creative entrepreneurs with trademark searches and applications. Call us at 646-820- 1366 or email us at nupur@nupurshahlaw.com. I am happy to have a complimentary conversation with you on how to secure and/or defend your rights.

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