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Do trademarks arise out of use in commerce by the company, customers or both? does intention to TM matter?

New York, NY |

does the company have to use something in commerce for it to gain trademark rights or can customers somewhat "assign" associations on their own? Did Jeremy Lin have first-use trademark rights to "Linsanity" at the point one person called him by that name (assuming he wasn't the one who started the nickname)? What happens if he didn't want to have or didn't care for TM rights? How do people know if something is being trademarked or not (assuming no registration), or if they intend to claim ownership (or is this irrelevant)?

Attorney Answers 4


  1. Q:"Do trademarks arise out of use in commerce by the company"?
    A: YES
    Q:" customers or both?
    A: Yes and No. Yes if the use is to refer to the company and not to some third party.
    Q:" does intention to TM matter?"
    A: YES. That is a basis which can establish priority is coupled with a Federal application for registration at the USPTO.

    Wow, too many questions. Separate the rest and post them one at a time.

    Customers can "assign" associations, if you mean transfer rights to them. Customers can associate company and goods or services and that is called "secondary meaning".

    I am not researching LInsanity for free. Hire one of us if you want specific answers rather than general guidance.

    People know if someone is trademarking something if they see it used as an indicator of source in reference to a product or service in commerce, since trademark rights arise automatically.

    Go to www.uspto.gov click on Trademarks and review the excellent videos that explain this basic trademark stuff.

    If this pertains to you or your company, you need to see a trademark attorney and not rely on general advice here. The specifics usually control the result and your biased view of them may lead you to come to the wrong conclusion.

    However, that said, I want to compliment you on knowing enough to ask.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.


  2. A company has to use a mark in commerce to identify the source of a product or service in order to acquire trademark rights for that mark in connection with those goods or services. There are also examples of situations such as HoJo (for Howard Johnsons) and Bug (for VW) where the consuming public created a nickname which the company later adopts .

    This answer is for informational purposes only. It is not intended as specific legal advice regarding your question. The answer could be different if all of the facts were known. This answer does not establish an attorney-client relationship.


  3. You should read the linked-to paper on the subject of community-created brands [analogous to consumer-created brands]. The sources in the bibliography also provide relevant information. Visit the link below.

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.


  4. I think you are asking whether a company could take advantage of the ground-swell of public sentiment surrounding a word or phrase "Linsanity", "Newtown Massacre", "Tebowing", use the phrase to promote products and procure trademark rights in the name by registering it before anyone else. Trademark rights arise from use in commerce, not registration. Thus, it does you no good to rush in to the trademark office to register "Linsanity" unless you are already using it to market goods or services are you can prove that you have a bona fide intent to do so within a limited (six months of less) time period. Further, any company who would try to profit off the the phrase "Linsanity" would violate the rights of publicity belonging to point guard Jeremy Lin, In short, there usually is no viable get-rich-quick scheme associated with using a catch-phrase that has become popular among consumers of fans.

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