One of the questions I hear most as a trademark attorney is “What is use in commerce?” The concept of “use in commerce” is vitally important in US trademark law, especially with regard to federal trademark registration. Needless to say, the “use in commerce” definition is something all trademark applicants should be aware of.
How is “Use in Commerce” Related to Trademark Registration?
As you may know, there are essentially two ways in which to register a trademark. The first is to file your trademark application on an “in-use” basis. This means that your trademark is already being used in commerce in connection with the advertising and sale of the products and/or services recited in your trademark application.
If your trademark is not yet in use in commerce, then you have the option of filing your trademark application on an “intent to use” basis. This allows you to reserve the trademark while you’re getting ready to provide your products and/or services. Later in the US trademark registration process, you’ll need to file either an Amendment to Allege Use or the Statement of Use, which demonstrates to the United States Patent and Trademark Office (USPTO) that you’re actually using your trademark in commerce.
What is “Use in Commerce” and Why is It Important?
I could sit here and give you the technical definition of “use in commerce” that you’d find if you went digging through the Trademark Federal Statutes and Rules. But, I want to make this as easy for you to understand as possible because if you file an “in-use” trademark application or the Statement of Use before your trademark meets the “use in commerce” standards, then your trademark application will be void and any resulting registration will be vulnerable to a potential trademark cancellation. I don’t want that unfortunate situation to happen to you.
The Use Must Be Genuine
Regardless of whether your trademark is for products or for services, the “use in commerce” must be genuine and real. This means that the use isn’t merely made for the purpose of filing an in-use trademark application, an Amendment to Allege Use, or the Statement of Use. So, for instance, let’s say you want to register a trademark for clothing items. Just printing a couple of t-shirts with the trademark on them and giving them to your two best friends wouldn’t be sufficient to file an in-use trademark application, an Amendment to Allege Use, or the Statement of Use. Similarly, let’s say you want to register a trademark for home remodeling services. Just quickly handing your sister a business card with your trademark printed on it before you start remodeling her kitchen wouldn’t likely be considered “use in commerce” either. Both of these examples just don’t seem like real, genuine, legitimate, ongoing commerce, do they?
Now that you know that “use in commerce” can’t just be for the purpose of submitting a trademark application, an Amendment to Allege Use, or the Statement of Use, we need to turn to how the trademark must be used in order to meet the “use in commerce” threshold.
“Use in Commerce” for Products
If your trademark application is for products, your trademark will be considered to be in use in commerce when:
1. Your mark is placed on the products, on product packaging, on labels or tags affixed to the products, and/or on documents distributed with the products (e.g. user guides, instructional manuals, and invoices), and
2. The products have actually been sold or transported within the United States (or within one of its territories).
This means that simply taking orders for a product isn’t “use in commerce.” Advertising a product that’s not yet available isn’t “use in commerce.” Putting a photo of the product on your website without any means of ordering it isn’t “use in commerce.” And only distributing a product outside of the United States isn’t “use in commerce.”
“Use in Commerce” for Services
If your trademark application is for services, your trademark will be deemed to be in use in commerce when:
1. Your mark is used in advertisements, marketing brochures, flyers, radio ads, television commercials, and/or on websites that promote the services recited in the trademark application, and
2. The services have actually been rendered in the United States (or within one of its territories)
This means that advertising and marketing of the services isn’t “use in commerce” by itself. You must have also rendered or provided the services listed in the application.
Is My Trademark In Use?
Sometimes, it can be difficult to ascertain whether the use of your trademark meets the threshold of “use in commerce.” If there’s any doubt whatsoever, it’s much better and safer to file an intent-to-use trademark application. In addition, you should file a Request for an Extension of Time if you don’t have use of your trademark by the Statement of Use deadline. This will help ensure that your trademark application and any resulting registration is rock solid and can be enforced in a court of law if necessary.
Do You Have Questions Regarding Trademark “Use in Commerce?”
I’m experienced US trademark attorney Morris Turek. I would be happy to discuss any questions you may still have about the definition of “use in commerce” and whether you use complies with US trademark law. I can be reached by phone at (314) 749-4059, via email at firstname.lastname@example.org, or through my contact form located at the bottom of this page. I look forward to speaking with you soon.
Related Article: What is Proof of Use for Trademark Registration?