Before a trademark can be registered with the USPTO, it must be used in commerce. The Lanham Act defines the term “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 U.S.C. § 1127). 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…”
Applicants seeking federal trademark registration, can apply under either a “use in commerce” or “intent to use” filing basis. Regardless of which application method is chosen, all marks must provide a proof of use (“specimen”) before the mark could be officially registered with the USPTO. “Use in commerce” applicants will provide a specimen in their initial application for trademark. Trademark owners using using the “intent to use” basis can file an application while they prepare to use the mark at a future date.
Businesses that deal with the sale of goods can show use of their trademarks in a number of ways, including placing the mark on the packaging, labels, or goods themselves. For services, use of the mark is often proven with a copy of an advertisement that bears the mark and describes the services.
When dealing with services, a trademark owner should consider several factors when establishing commercial use. A proper and effective way to use a service-mark in commerce is by placing ads that can be viewed across state lines. It is important to remember that not only should the ads display the mark, but also properly identify the services.
For advertisers seeking to display brief advertising copy to web users, Google offers “AdWords”, its pay-per-click advertising system. With Adwords, a business can arrange to have advertisements appear when a Google user inputs the designated “keywords” into a Google search. When a web user inputs search terms into Google, the search engine displays paid advertisements known as “Sponsored Links”, along with the natural results of a search. This advertising platform lets an advertiser purchase keywords that will trigger the appearance of their ad when the keyword is entered as a search term.
These advertisements are limited to four lines: (1) a headline, which must be fewer than 25 characters; (2) a body line for ad text, which must be fewer than 35 characters; (3) a second body line for ad text, which must also be fewer than 35 characters; and (4) a URL display line (a link to a webpage), which must be under 35 characters, as well.
Assuming your trademark is accurately displayed to ad viewers, and the services can be identified, purchasing keywords on Google’s Adwords platform will constitute commercial use of a service mark.
In the courts, the majority view is that using a trademark to generate advertising constitutes a “use in commerce” under the Lanham Act. Furthermore, many courts reason that a company’s use of a trademark to generate advertising is a “use in commerce,” even when the customer never sees the mark.
Not only can purchasing keywords on Google Adwords constitute commercial use, it also has other implications for trademark applicants. Marks that fail to meet the “inherent distinctiveness” requirement will not qualify for the USPTO’s principal register. However, if a merely descriptive mark can show a secondary meaning, it can make its way toward principal registration. Secondary meaning has been demonstrated by applicants that have made significant expenditures on Google Adwords.
Using a mark in commerce is a requirement for all trademarks. Proving commercial use to the USPTO is a mandatory step in the registration process, regardless of whether your mark is associated with a good or service, or whether you are seeking registration on the Principal or Supplemental register. Purchasing Google Adwords can be an effective way for trademark owners, offering services, to establish use of their marks in U.S. commerce.
Disclaimer – No Legal Advice: The information and content available on this site is offered only for informational purposes and is not intended to be legal advice. Posts are for educational purposes only as to provide general understanding and general information of the law, not provide specific advice. Blog posts should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.