What is use in commerce?
To establish trademark rights in the U.S., a trademark owner must be the first to use a mark in commerce on particular goods or services. In a trademark application for federal protection, the USPTO will ask for the date the mark was first used anywhere, and the date the mark was first used in commerce, which cannot be earlier than the anywhere date.
What is commerce?
The trademark examining rules by the USPTO refer to Section 45 of the Trademark Act, 15 USC 1127, which defines “commerce” as “all commerce which may lawfully be regulated by Congress.” [see TMEP 901]. According to Section 45, “use in commerce” is defined as follows:
“The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce–
(1) on goods when—
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.”
Goods vs. Services
At the outset, the starting point is the identification of goods and services recited in the trademark application. For goods, use in commerce refers to the product being sold and shipped within the United States in the ordinary course of trade with the mark preferably displayed on the product itself or on external materials such packaging, tags and labels. In certain cases, a brochure or online point-of-sale display may suffice as a specimen of use for goods if certain requirements are met (e.g., means for ordering). Advertising and marketing materials are generally unacceptable specimens for goods.
For services, use in commerce refers to the services being provided within the United Sales in connection with the mark. Acceptable specimens of use for service marks may include advertising and marketing materials displaying the mark and referencing the services identified in the application.
How much use is enough?
Examples of insufficient usage would include token use or minimal use for the sole purpose of supporting a trademark application. While there is no bright line test as to the units or dollar amount sufficient to support bona fide use in the ordinary course of trade, the courts have been able to find insufficient usage in cases such as a single shipment, a single sale of a handful of units, a single transaction within a span of years, etc.
Historically, “use in commerce” referred to the offering of products or services that crossed state lines (interstate) as opposed to sales solely within a state (intrastate). The interstate vs. intrastate distinction is less significant nowadays in light of ecommerce and that the generally accepted principle that even intrastate sales can affect interstate commerce.
Sales to foreign countries may also count as use in commerce.
What about pre-sales activity?
For software products such as mobile apps, use in commerce generally refers to the launch of the product as opposed to mere marketing. Beta testing might be sufficient to qualify as use in commerce depending upon the level of activity.
Crowdfunding campaigns will likely be considered pre-sales activity that does not meet the sold or transported requirement.
What if there is no use yet?
An applicant should file an Intent-To-Use application for a mark that has not yet been used. For borderline levels of activity, filing an ITU application is a safer approach because it provides the applicant with an earlier filing date (i.e., “priority”) and more time to make sufficient use of the mark before submitting evidence of usage to the USPTO.