What is use in commerce?
To establish trademark rights in the US, a trademark owner generally must be the first to use a mark in commerce on particular goods or services. There are a few exceptions to this general rule such as when the applicant owns a foreign registration or files an Intent-To-Use application. 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.
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Trademark Use: What is commerce?
Commerce matters for trademark protection because it takes more than mere thought to protect a mark. You have to use the mark in the manner described above in order to gain protectable and registrable trademark rights.
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.”
What are use requirements for goods vs. services?
For goods, use in commerce refers to the product being:
- sold and transported within the United States in the ordinary course of trade; and
- the mark is 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).
Unlike service specimens of use, advertising and marketing materials are generally not acceptable specimens for goods.
What is use in commerce for services?
For services, use in commerce refers to the:
- mark being used in the sale or advertising of services; and
- services are rendered within the United States, or in the US and a foreign country.
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.
Keep in mind that services must be rendered, and not merely offered. 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 you do not yet have use in commerce?
You can file an Intent-To-Use (ITU) application for a mark that has not yet been used. For levels of activity that are borderline use in commerce, filing an ITU application is a safer approach. 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.
A trademark application initially filed based on use may be amended to an Intent-To-Use filing basis if the use as of the filing date was insufficient.
Date Of First Use Anywhere vs. Date Of First Use In Commerce
The date of first use anywhere is the date when the:
- goods were first sold or transported, or services were first rendered, under the mark; and
- such use was bona fide and in the ordinary course of trade
This date of first use anywhere includes use in foreign countries.
The date of first use in commerce generally has the same two requirements above except that that the activity must have taken place in the US.
Notice that the nature and extent of activity between the two types of dates are the same. The date of first use anywhere does not refer to a lesser use than the date of first use in commerce. The extent of trademark use is no less with anywhere as compared to in commerce. The only difference is that first use anywhere can be outside the US. If the applicant has not made use of the mark outside the US, then these two date should be the same.
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