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What is “Use in Commerce” –Part 1

—Daniel M. Levine

Trademarks in the United States require “use in commerce” before a Registration certificate or rights in the mark can be granted. Satisfying this crucial requirement differs greatly from how the word “use” is commonly understood.

What is “Use in Commerce

“Use in Commerce” can mainly be broken into two separate requirements. First, the trademark must be exposed to the general consuming public. Examples of public-facing uses include websites for purchase of goods or services, advertisement in magazines, or a giveaway at a local supermarket. Inter-office communications and documents, a buy order to a parts supplier, or on items shown to potential investors do no satisfy this requirement.

Second, the trademark must be used in connection with the goods or services offered. For physical goods, the trademark appearing on the goods themselves or its packaging satisfies the second requirement. Almost all labeling or packaging will be accepted so long as they are physically connected to the goods. For example, decals, printing, embossing, engraving, stamping, labeling, stickers, hang tags, and slip covers will suffice. An item shipped in a box with a loose tag inserted or the trademark written on an invoice generally will not meet the requirement.

Services are treated differently from goods due to their ‘intangible’ nature. To satisfy the ‘affixing’ requirement for services, the mark must be used in materials describing or showing the services. A sign on a storefront, an invoice showing the services rendered, or the inclusion on a website can all satisfy this requirement. Business cards, stationery, or letterhead containing the trademark might be acceptable for services, even though they would not for goods, but they are not ideal.

The uses themselves must additionally fall under types of ‘commerce’ the federal government has the power to regulate. In the United States, this requirement is generally met by interstate commerce. For purposes of “trademark use”, these terms are quite broad and encompass activities that do not directly send goods and services across state and territorial boundaries. A restaurant in Chicago, Illinois drawing in travelers from nearby states is interstate use for these purposes. Reaching out to other states and territories may also satisfy this requirement. Advertising in travel/guide books, targeted web advertising, or attending trade shows and conferences may all meet the level required.

Showing “use in commerce” to the United States Patent and Trademark Office

Trademark applications in the United States can be filed based upon ‘use’ or an ‘intent-to-use’ (“ITU”). If an application is filed on an ITU basis, then subsequent evidence of “use in commerce” must be filed later. ITU’s will trigger additional filing fees. An application based upon “use” does not incur any additional fees.

The Trademark Office does not require “use” to be shown for every individual goods or services. Only one good or service within each Class of goods or services need proof of its “use” submitted. When “use” is filed, ALL the goods or services within a Class should be in use. If they are not in use at that time, the goods or services should be removed from the application or divided into a new trademark application.

Photographs of the goods or packaging, advertising materials, point-of-sale displays, website screenshots, or other materials bearing the trademark will demonstrate use. There are no ‘artistic’ requirements for the submission, only that the trademark and goods/services can clearly be seen.

Valid and accurate “use” is important for ITU applications. Once “use” has been submitted for an ITU application “use” may not be withdrawn. If the examining trademark attorney has any objections to the use it could prove fatal to the application. On the other hand, a use-based application, however, can be amended to an ITU basis and the applicant can later submit use and pay the additional fee.

In Part II we will cover details about how much “use in commerce” is required to show “use,” special cases, and go into further depth about “use in commerce” for United States trademarks.

The attorneys at Roberts McGivney Zagotta LLC are able to review your trademarks, conduct trademark clearance searches, determine use, and compile an overall trademark strategy for your business.

The information in this article is for informational purposes only and does not constitute formal, legal advice. Consult with one of the attorneys from Roberts McGivney Zagotta LLC for advice about your particular circumstance.