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.
Goods vs. Services
At the outset, use in commerce initially depends upon whether goods or services are covered in the trademark application. For goods, use in commerce refers to the product being sold or shipped within the United States in the ordinary course of trade with the mark displayed on the product itself or on external materials such packaging, tags and labels. In certain cases, a point-of-sale display or brochure may suffice as a specimen of use for goods if certain requirements are met. 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?
As to the extent of usage, use in commerce requires more than 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 determine insufficient usage, 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.
What if there is no use in commerce yet?
An applicant should file an Intent-To-Use application for mark that has not yet been used in commerce. For borderline levels of activity, filing an ITU application is a safer approach because it provides the applicant with more time to make sufficient use in commerce before submitting evidence of usage to the USPTO.
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