What does ‘Use in Commerce’ mean in your USPTO trademark application?
Before a mark can be registered with the United States Patent and Trademark Office an applicant must demonstrate the mark’s “Use in Commerce”. Simply meeting the evidentiary burdens of the USPTO application, however, does not necessarily mean your registered mark will stand up to an attack of the mark’s validity. The concept of ‘Use in Commerce’ is essential for every trademark applicant to understand, as a misapplication of this concept can result in an abandoned application or worse, a registration that crumples under a legal challenge.
The Lanham Act (the governing US law for federal trademarks) defines ‘Use in Commerce’ as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark” (15 USC § 1127).
To satisfy the requirements of the Lanham Act an applicant must show not just a “bona fide use of a mark”, but also that the product or service associated with that mark effects interstate commerce. While this is generally a very low threshold to meet (examples of products that Courts have held effect “interstate commerce” include commodities sold entirely intrastate if they may affect the price of interstate trade or establishments that serve out-of-state clientele) it is something to be aware of. More information on this issue is available here.
Proper Specimens for the USPTO:
Proper specimens (i.e. examples of ‘Use in Commerce’) are different depending on whether an applicant’s mark is for a service (e.g. cleaning services) or for goods (e.g. bowling balls). For goods a mark is used in commerce when:
“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
The goods are sold or transported in commerce.”
When filing a mark for some goods the Lanham Act and the USPTO recognize that it may be impractical to affix the mark directly to the product. Many applicants choose to use an online ordering page as a “display”, which will suffice so long as the page describes or shows the product, includes the mark in association with the product, and gives a customer the opportunity to purchase the item on that page (e.g. the page has a “buy now” button).
A common mistake is for applicants to submit a “mock-up” or artist’s rendering of what their product looks like with the mark. This is an unacceptable form of specimen (though a mock-up can be used on an order page).
For services a mark is used in commerce 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.”
Specimens for services are generally pretty easy to produce as acceptable specimens include a brochures, fliers, images of a sign, or web advertisements.
Date of First Use:
This is a problem that trips up a lot of people and can cause a mark to be canceled if the applicant is not careful. Generally, in the application process the USPTO will simply take an applicant on their word about the date of first use for their mark. However, if the mark is contested in the USPTO Trademark Trial and Appeal Board (TTAB) or in federal court the person contesting can claim that the applicant’s use of the mark was after the date specified in the application. A registration that claims first use earlier than actual first use will be considered “void ab initio”, and the registration will be canceled.
The USPTO and federal courts have not given definitive guidance on what actions constitute first use in commerce, but generally the use must be in connection with the sale or offering of the product or service specified in the application. People run into problems when they put down the first date they started using the mark at all, and not the first date the mark was first used in connection with the goods or services on the application. For example, suppose a start-up hotel company picked a name (“Alpha Hotels” let’s say) and took numerous steps to get their business operational in 2009. They registered a business name, purchased a building, hired interior decorators and staff, and got loans from a bank all using their mark Alpha Hotels. They open the doors to the public in 2010. If they file the trademark Alpha Hotels for “hotel services” their date of first use will be in 2010. Despite all their activity in 2009 involving the name Alpha Hotels, they didn’t actually offer hotel services (i.e. temporary accommodations for people) until 2010.
Other issues to consider:
Ornamentation is another problem that applicants run into regarding their specimen, particularly when they apply for a design mark. The typical example is on items like t-shirts or coffee mugs. If consumers will buy the product because they like the design then the USPTO may argue that the design is an ornamentation that consumers will not recognize as a brand.
Consumers need to view a mark as a brand or source indicator in order to get protection under trademark law. The USPTO has often rejected specimens where the mark is buried in the body text of an advertisement or otherwise displayed in a way that would not suggest the word or design is functioning as a mark. Including a “TM” after the word will not be dispositive in showing that consumers will perceive the word or design as a mark.
A specimen to the USPTO will never be proper if it does not include the mark as the mark is described in the application. Failure to meet this requirement results in what is called “mutilation”. This problem usually occurs when there are additional elements surrounding the mark such that consumers might believe the mark includes those additional elements and not be limited to just the portion described in the USPTO application.
While ‘Use in Commerce’ is only one of many considerations when filing a trademark, an error in this area can be quite costly for the applicant. Some considerations, like the date of first use, the applicant only gets one shot at, so care should be taken. Many applicants are individuals who choose to file their own mark. The USPTO website has good information available for explaining the trademark process and the requirements for filing a trademark application. The application form may seem straight forward, but there are complex legal rules at play that may result in pitfalls for the unwary. Hiring a trademark attorney is an applicant’s best bet in ensuring that their trademark rights will be properly protected and should be a serious consideration for any businesses that expects to invest significant money into publicizing their mark.
The above information is not legal advice. If you have a question regarding trademark law or other law please contact an attorney.
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