Famous country-music-turned-pop-star Taylor Swift made headlines recently when she filed a slew of trademark applications with the United States Patent and Trademark Office for various lyrics from her latest album, entitled "1989". Ms. Swift's crop of trademark applications (including "This Sick Beat", "Party Like It's 1989", "Cause We Never Go Out of Style", "Could Show You Incredible Things", and "Nice to Meet You. Where You Been?") were filed in connection with an impressive array of goods and services. For example, "This Sick Beat" was filed in sixteen separate international classes, including in connection with entertainment services, educational services, public appearances, games, toys, Christmas tree decorations, hair accessories, kitchen linens, potpourri and umbrellas.
Ms. Swift's trademark application strategy provides a good example of savvy business planning aimed at securing priority rights in potential future business opportunities. All of Ms. Swift's recent applications were filed as "Intent to Use" applications, meaning the trademarks are not yet "in use in commerce" with respect to all of the goods and services she is claiming. Even before using a trademark, an "Intent to Use" application can be filed in order to secure a priority date based on the date of filing. Provided the applicant has a good-faith intention to begin using the trademark within six months of the date the USPTO approves the application (which time period can be extended up to five times), the applicant will qualify as the "first user" of the trademark even against someone who demonstrates actual use first, but who files a later trademark application. This is known as the "first to file" rule, which is an invaluable and often under-utilized principal of U.S. trademark law.
With this utilization of the first to file rule, Ms. Swift has taken steps to secure the exclusive right to use her most popular lyrics in connection with a broad range of consumer products, which could lead to lucrative licensing opportunities in the future.
This instance demonstrates how individuals and businesses can seek to proactively protect their future business interests in the marketplace by effectively utilizing the U.S. trademark system, particularly, the "the first to file" rule.
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For more information on this rule or how you can use it to protect your own intellectual property, please contact the author or a member of Polsinelli's Intellectual Property practice.