It is a fundamental principle of trademark law that the first person to actually use a trademark in commerce has priority over that mark. “Use in commerce” is defined by statute to mean “the bona fide use of a mark in the ordinary course of trade.” A mark is deemed to be in use in commerce when it is placed “on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” 

How have courts interpreted this statute in practice?  Can you establish the use of a mark in commerce before you sell any products using that mark? How about years before?  Can the distribution of “swag” – T-shirts, frisbees, etc. – bearing a trademark years before the mark is used on any actual products establish the “use in commerce” of that mark and, thus, trademark priority, even against an owner of an incontestable registration for that mark?

The answer to these questions may be “Yes,” at least in the Ninth Circuit which has used a “totality of the circumstances” approach to determine use in commerce. 

The United States District Court for the Northern District of California recently affirmed the use of the totality of the circumstances approach to first use in BuzzBallz, LLC v. MPL Brands NV, Inc., No. 24-CV-04004-EKL, 2025 WL 2052301 (N.D. Cal. July 22, 2025). Addressing a counterclaim for cybersquatting brought against BuzzBallz, the BuzzBallz Court addressed the issue of whether the counterclaimant’s “Big Sipz” trademark was first used in commerce before BuzzBallz’ March 22, 2022 registration of the bigsipzcocktails.com domain name. Based on the allegations that the counterclaimant began marketing its early designs for the Big Sipz products to distribution partners in February, 2022, before actually launching the Big Sipz products in select states in November, 2022, the Court found that it plausible that the counterclaimant began to use the Big Sipz mark in commerce as early as February 2022, before BuzzBallz registered the bigsipzcocktails.com domain name the following month. Thus, under the totality of the circumstance approach, marketing activity can establish first use in commerce, even absent product sales.   

This is consistent with the holding reached by the United States District Court for the Southern District of California in Stone Brewing Co., LLC v. MillerCoors LLC, 445 F.Supp.3d 1113 (2020). This case involved trademark claims asserted by Stone Brewing Company, which owned the trademark registration for STONE for its craft beer products since 1996, and whose trademark had become incontestable against MillerCoors, which sold a line of economy beers under the brand name “Keystone.” This dispute arose when, in 2017, MillerCoors rebranded its Keystone beer packaging by separating out “Key” and “Stone and giving “Stone” prominence. Stone Brewing sued MillerCoors for trademark infringement.

The Stone Brewing Court was addressed competing motions for summary judgment, including a motion from MillerCoors, seeking to establish its priority to the Stone mark as a matter of law, based on its claim that it used that mark in commerce before Stone Brewing.

In support of its claim to trademark priority, MillerCoors pointed to evidence “of its use of ‘STONE’ and ‘STONES’ on the packaging material for its 30-packs of Keystone beer, in advertising, and other marketing merchandise such as frisbees to demonstrate its prior continuous use, beginning in 1991 and continuing through 2017.” 

In response, Stone Brewing introduced evidence that “MillerCoors never used ‘STONE’ or ‘STONES’ on the Keystone packaging or as a source identifier prior to 2017.”  Stone Brewing Company also noted that MillerCoors archivist “admitted that, other than 30-packs there was not ‘any Keystone marketing or other materials between 1996 and 2010 that used ‘STONE’ or ‘STONES’.’”

After considering all the evidence presented, the Stone Brewing Court held that there was a genuine issue of material fact as to whether MillerCoors had demonstrated a priority right to use the “STONE” and/or “STONES” mark.

The takeaway from these cases is that under the totality of the circumstances approach used by the Ninth Circuit, trademark priority can potentially be established by the use of the disputed trademark in marketing materials, packaging materials and/or on ‘swag’ items like frisbees and T-shirts, even in the absence of actual product sales bearing the mark.. 

As such, when considering a claim to trademark priority, a detailed factual analysis should be done on any use of a disputed mark, before any conclusion can be reached as to whether or not trademark priority can be established for that mark, even against a competing owner of a registered trademark that has become incontestable. 

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