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What is “Use in Commerce?” – Part II

—Daniel Levine

This article continues to explore the definition of “use in commerce” in the context of U.S. Trademark Laws.  Use in Commerce-Part I explored certain components of ‘use in commerce’ and how ‘use’ can be shown to the United States Patent and Trademark Office. This entry covers more specific aspects of ‘use in commerce’ such as how much ‘use’ is required and how to show use for technology and uncommon goods and services.

How much ‘use’ is required?

The Trademark Office and Federal Courts have been trending downwards for the amount of use required to sustain a ‘use in commerce’ claim. As an example, a recently decided case determined the sale of two hats was ‘use in commerce’. Any amount of commerce if repeated many times may be sufficient to show ‘use’. So, while two hats being sold may or may not have a ‘substantial effect’ on interstate commerce, selling two hats repeatedly will.

Not all types of ‘use’ will be accepted. The use should be bona fide and in the normal course of trade. Use, even ample amounts, may be lacking where purported sales were made solely to family and friends, where no promotional or advertising activities were undertaken, or where periods of use were followed by long absences of use.

How is ‘use in commerce’ maintained?

‘Use’ in commerce must continue to be maintained. As with showing ‘use’, the continued use must be bona fide and in the normal course of trade.

The Trademark Office allows for some periods of non-use for specific circumstances, especially where events are out of the owner’s control, such as government regulations prohibiting the sale of the goods or services, a labor strike, or during times of war. A lack of use may also be permissible when there is an honest, genuine mistake, such as an employee’s failure to affix tags to goods.

Non-use may also be excused when the goods or services offered are not purchased despite the trademark owner undertaking extensive marketing efforts.

Showing ‘use in commerce’-special cases

Point-of-sale (POS) displays and websites

Point-of-sale (POS) displays ‘designed to catch the attention of purchasers’ to induce a sale of the goods may be valid use of a trademark. POS displays include signs placed on shelving directly touching the goods or in materials located next to the goods.

The key determination of valid ‘use’ is the display’s association and connection to the goods themselves. Other common factors include the mark’s prominence, size, placement, repetition, and its proximity to the goods intended to sell.

Websites can also act as a virtual POS display if the association and connection considerations listed above exist and there is an immediate link or form to purchase the goods.

Downloadable software and digital goods

The United States Trademark Office classes downloadable digital goods as a type of physical good. This classification as a good carries the same ‘affixation’ requirement as any other good. ‘Use’ for these goods can be shown in several ways:

Ø  Displaying the trademark in a startup, launch, or title screen.

Ø  For software the mark can appear within the program itself.

Ø  Using the mark in close association and connection to the goods themselves together with a link to purchase the goods.

Online, non-downloadable services

Online, non-downloadable items are classified as ‘services,’ not goods. This classification allows ‘use’ to be shown in all the ways mentioned for downloadable software and digital goods as well as more open-ended ways. The use of a mark with a description of the non-downloadable item, such as the features of a video game or software program, can show ‘use’ even though this would not be adequate for downloadable digital goods.

Odd-sized or shaped goods

The nature of certain types of goods can make it impractical or impossible to ‘affix’ the mark to the goods. For example, natural gas delivered from a utility directly to customer’s homes via pipes. These types of goods may demonstrate ‘use’ where the mark appears on an invoice, shipping/handling documents, or in included literature with the goods (such as chemical hazard and data sheets).

What is not ‘use in commerce’?

The Trademark Office and courts are more thoroughly examining and inquiring into the specimens of ‘use’ submitted in the course of a trademark’s prosecution. Objections from the Trademark Office regarding ‘use’ commonly come in one of two varieties.

First, the use of the trademark is seen as ‘prospective’ and not actual. Common examples include mock-ups of prospective goods or packaging, digital renderings, or printer’s proofs.

Note that trademark examiners may review an applicant’s website or other materials that are not part of the trademark application to verify if the goods and services are available. A good practice tip is to keep the use submitted to the Trademark Office live in advertising, websites, or other promotional materials until ‘use’ has been reviewed and approved.

Second, uses of the mark that are not public facing or are considered as advertising or promotional materials, such as price lists, press releases, listing in trade directories, business cards or stationary, and online advertising banners often fail the ‘use in commerce test.’


If you have specific questions about your trademarks, the attorneys at Roberts McGivney Zagotta LLC are able to review your trademarks, conduct trademark clearance searches, determine use, manage online and social media infringements, 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