USE IN COMMERCE — WHAT DOES IT MEAN?

You’re ready to file your trademark application with the USPTO, but you’re asked to provide the date that you first used your mark “in commerce”.  While this may seem straightforward, it can end up being a tricky thing to answer, especially in this day and age where so much is done via the internet and online platforms.

The best place to start trying to figure it out is at the beginning.

What is a trademark?

A trademark is a word, phrase, or design that tells consumers something about who is providing certain goods and/or services.  In other words, a trademark helps consumers to distinguish the source of goods and/or services being provided by one party from those being provided by another party.

For most USPTO trademark applications, in order to receive a registered mark, you will need to provide the USPTO with information about how you are using your mark in commerce for the goods and/or services that are listed in your application.

So now we get to the tricky part – what does it actually mean to be using your mark “in commerce”?

Use in commerce

The federal trademark statute, also known as the Lanham Act, under 15 U.S. Code § 1127, defines “commerce” as “all commerce which may lawfully be regulated by Congress”.

It goes on to “clarify” (I use that term loosely) what “use in commerce” means, stating:

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—

(1) on goods when—

(A) 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

(B) the goods are sold or transported in commerce, and

(2) on services 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.

That’s really clear, right?  Or maybe not…

At its most basic level, this means that use in commerce requires two things:

  1.     Using the mark to identify your goods and/or services; AND
  2.     Selling your goods and/or providing your services in commerce.

Using the mark

The first requirement is usually fairly easy to navigate.  For goods, you will usually need to use the mark on the product itself, on a tag or label attached to the product, product packaging, a point of sale display, or on a website where the goods are can be purchased immediately.

For services, you will usually need to be using your mark on advertising, a storefront, or your website offering your services.

One scenario that can sometimes be confusing is whether your domain name alone is enough. In Cross Commerce Media, Inc. v. Collective, Inc., 841 F.3d 155, the court there confirmed that “the use of a phrase in a domain name does not necessarily mean that it is being used as a mark in commerce.”  Why?  Going back to our trademark definition above, your use of the mark needs to convey some information to consumers about the source of goods and/or services being provided.

For example, let’s say you have the domain name, but your website has not gone live.  This is not sufficient use of your mark because the domain name alone doesn’t tell a consumer anything about the goods and/or services being offered under this mark.

But let’s say you do have a live website, but the only place you use the mark you are applying for is in the domain name itself. It’s not found anywhere in the content of your website or on your products or other advertising materials.  If that’s the case, you likely won’t be able to meet the first requirement.  With millions of active websites out there, each with their own domain name, some similar, some not, consumers likely will not be able to identify your specific domain as being a source indicator without something more.

If you’re still not sure, then you should seek advice about proper trademark usage from an attorney. Getting this advice early on in your business venture can save you time and money in the long-run associated that you might otherwise expend if you have to rebrand or restructure your advertising and marketing strategy.

Selling your goods and/or providing your services in commerce

The second requirement can be a little more complicated, but this can also be broken down into two parts.

The first part is asking yourself whether you have actually made a sale of your goods or provided your services.  This should be fairly simple to figure out…but in some instances, it is not as clear cut.

For example, you have a new skateboard that you’re going to make but you don’t have the funding.  So you decide to try crowdfunding through a Kickstarter campaign.  You end up having some success and getting the funding you needed, but you haven’t actually provided anyone with your new skateboard yet.  Have you actually sold your goods in commerce yet? 

Unfortunately, the answer is unclear and will likely depend on your exact circumstances.  The problem is that this uncertainty doesn’t help you provide accurate information in the trademark application you are ready to file now with the USPTO.  And listing inaccurate information could make it difficult to enforce your rights down the road and leave you open to the possibility of someone else trying to oppose your application or cancel any resulting registration based on the faulty information provided initially in your application.

Again, the best advice is that you should seek advice to find out how best to move forward in your situation.  Speak to a trademark attorney about your specific situation so that they can work with you to come up with a strategy that will give you the strongest foundation possible and minimize the risk of opposition and/or cancellation down the road.

“In commerce”

Now you’ve made it this far. You’re using your mark in the right way.  You’ve actually sold your goods and/or provided your services – now the question becomes whether that sale or provision of services was “in commerce.”

What does “in commerce” really mean?

Article 1, Section 8, Clause 3 of the Constitution, otherwise known as “the commerce clause”.  This section of the Constitution states that Congress has the power “To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes”.

This gives us more clarity on what is meant by the “commerce” portion of the Lanham Act and what is required to obtain trademark protection.  The Commerce Clause means Congress can regulate commerce that occurs between the US and foreign nations, interstate commerce (commerce that occurs between states), and commerce with Native American tribes.

For trademark purposes, in most instances, this requirement will be met if your goods are shipped over state lines or internationally or if you provide your services to customers who travel across state lines or internationally.  But because the law is never as black and white as one would hope, and more often than not, the answer lies somewhere in the grey area – sometimes more will be needed, and sometimes less will be needed, in order to count as use “in commerce”.

Once more, if you aren’t sure whether your use actually counts as use “in commerce”, you should speak to a trademark attorney and talk to them about your specific circumstances. They can then help you determine if you actually are using your mark “in commerce”, or if its determined that you aren’t using your mark “in commerce”, your trademark attorney can work with you to help you figure out what steps you should take to get there.

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LAURA FIGEL, is an Attorney in the Mountain View office of LegalForce RAPC. She specializes in intellectual property, including patents, copyrights, and trademarks, as well as corporate matters. Laura’s main focus is assisting clients in identifying how best to protect their ideas and grow their business. When she's not doing that, you can probably find her strapped into a harness climbing some rocks, or in the shop turning a bowl

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