Trademark Use in Commerce
No trademark common law trademark rights can be acquired, and no trademark can be registered with the federal government, until is is being used in commerce. By understanding the value of trademark use, you’ll be more prepared to defend your trademark rights.
Trademark Use in Commerce Definition
There are many requirements that a trademark must meet prior to being registered. Nuances to some of these conditions exist, but the trademark use in commerce rule is largely inflexible. To qualify, the trademark must have bona fide use in the ordinary course of trade. So, filing or registering a trademark merely to “reserve” it or for squatting purposes is not allowed.
This means the goods or services listed in your application are being sold or offered to consumers. Additionally, your brand’s offerings must either be transported or rendered in commerce. This typically means you’ll need to conduct business functions or your product will have to travel in more than one state.
The following actions do not in themselves constitute use in commerce:
- Registration of a domain name.
- Distributing marketing materials.
- Creating social media profiles featuring brand identifiers.
- Registering a business name in your state.
Each of these actions may create some sort of ‘nominal first use,’ but none of them constitute ‘first use in commerce.’ Until services are actually rendered or a product is sold to a consumer, though, you have not met the threshold of use in commerce.
If you claim use in commerce and it’s discovered that such use has not occurred, you will face trademark cancellation. This could leave the door open for your competitors to register your trademark and profit from your brand’s reputation. This type of situation is completely unnecessary since you can apply for a trademark on an intent to use basis.
Trademark Use in Commerce Requirement
For a U.S. Trademark Application, the trademark use in commerce requirements are strict. Failure to meet or maintain them can result in an abandoned trademark. In addition to actual sales taking place involving interstate commerce, you must also meet the following requirements.
Proper Trademark Placement
The goods mentioned in your application must actually feature the registered trademark. This can be on the goods themselves (e.g. labels), their containers (e.g. product packaging) or displays where the product is offered.
Appropriate Amount of Use
One of the most important trademark use in commerce requirements relates to the amount of use involved. De minimis use is not sufficient to maintain a trademark, so there must be sufficient and continuous use of the trademark.
There is no specific definition of what constitutes sufficient use. In previous cases, courts have decided that single transactions, shipments or sales were inadequate for proving use in commerce. Every situation is different, though, and a solitary delivery in one industry could be worth millions more than 100 shipments in another.
The lesson to remember is that you should never attempt token use or the least usage possible in order to satisfy trademark use in commerce requirements. If the use is minimal, the trademark is exposed to a trademark cancellation action. If there is any question about whether there is enough use, an intent to use application may be the best option.
Continued Use of Trademark
Although a Declaration of Use must be filed five years after registration, a trademark only needs to be renewed every ten years after being registered. This doesn’t mean that the owner of the property can’t lose their rights over it. Continued use in commerce is required to maintain trademark protections.
If three years go by without use, a trademark is presumed to be abandoned. The USPTO doesn’t keep track of usage except when Declarations of Use are filed. A third party interested in securing your trademark, however, can file a Petition to Cancel to bring nonuse to the USPTO’s attention.
If the cancellation process begins, you’ll need to either show continued use in commerce or prove that you had intent to resume such use. Failure to do so will result in a dead trademark.
Use in Commerce Service Marks
Registered service marks receive the same protections as other trademarks. The major difference is that service marks are used by brands that provide services rather than goods. In 2015, 41.3 percent of all applications filed were for service marks.
Since owners of this type of trademark don’t have physical goods in which to affix their trademark or logo, they have to provide different evidentiary specimens. This can include anything that is displayed or used in the advertising or sale of related services such as a website.
Other than what they represent and the necessary specimens of evidence, trademarks and service marks have no significant differences. Both can utilize the federally registered symbol, be used as a basis for trademark litigation and need to be renewed on the same timeline.
Intent to Use in Commerce
In 1988, the Lanham Act was amended by the Trademark Law Revision Act to allow applications based on a bona fide intent to use in commerce. Prior to this law, intellectual property owners needed to already have established sufficient use of their trademark. The new application allows a brand to reserve their intellectual property for imminent use.
Intent to Use Trademark applications do not grant registration on their own. After approval instead of being granted registration, individuals who file based on intent to use will receive a Notice of Allowance. In this case registration will only be granted after a specimen of use showing use of the trademark has been filed.
This is the timeline you can expect after submitting an application:
- The Application is forwarded to USPTO examining trademark attorney in about four months.
- Examining attorney conducts a review for technical issues and the possibility of consumer confusion.
- Registerable trademarks are placed in Official Gazette for 30-day opposition period.
- If no Notice of Opposition or extension request is filed, a Notice of Allowance issues.
- You’ll have six months to file a Statement of Use with specimens of use or request an extension.
- USPTO examining trademark attorney issues registration if use in commerce is proven.
If your trademark hasn’t been used in commerce within six months of allowance, you have the ability to request an extension. Each extension will give you an additional six months, but they cannot exceed 36 months following allowance. The average processing time following Statement of Use submissions is about a month.
Any application based upon an intent to use in commerce must include a declaration of bona fide intent. This is all the USPTO requires as evidence. Failure to eventually engage in actual commercial use, however, will result in an abandoned trademark.
While an intent to use application can provide additional time to engage in commerce, you will end up paying more for registration. Your Statement of Use submission and every extension request requires extra fees. If you need to quickly establish rights over a trademark, though, the additional costs are worthwhile.
Trademark Use in Commerce Examples
Although strict rules exist regarding evidentiary specimens, there are a variety of trademark use in commerce examples that are acceptable. Acceptable submissions will vary dependent on whether an application is based on goods or the rendering of services. Either application type must meet commercial use requirements.
Examples of Evidence of Use for Goods
- The actual goods: Photos of hairbrushes, printers or phones showing the trademark.
- Affixed labels or tags: Paper sleeves around glassware or tags on a shirt.
- Packaging: Boxes that contain toys, packaging for toothbrush or wrapper on a candy bar.
- Sales display signs: Trademarks featured on soda machines or fruit stands.
- Webpages: Screenshot of any webpage that allows the direct purchase of the goods.
- Software: Screenshots of a launch screen or webpage offering downloads.
All these evidentiary specimens must feature the applied-for trademark.
Examples of evidence of Use for Services
- Printed or online advertising: Screenshot or a webpage or an advertisement showing the trademark.
- Invoices: PDF of a customer bill that features the trademark.
- Other marketing materials: Brochures used for advertising.
- Signage: Photographs of your trademarked business signage (e.g. grocery store marquee or restaurant sign).
- Materials used to render service: Photos of restaurant menus or screenshot of video game launch screen showing trademark.
Examples Likely to be Refused
- Photos that don’t show that trademark.
- Pictures showing the trademark on the wrong goods or services.
- Any specimen indicating a lack of use in commerce (e.g. mock-ups or printer’s proof).
- Inappropriate type of specimen (e.g. webpages for products that don’t allow a purchase).
If your evidentiary specimen showing trademark use in commerce is refused, it doesn’t mean your application is dead. In most cases, you can submit a substitute or verified specimen to overcome this refusal so long as the specimen was in use at the time the statement of use was filed.
We can assist with issues related to use of a trademark in commerce. Please contact us for a consultation.