What Does ‘Use In Commerce’ Mean For a Trademark?

What is the Definition of Use in Commerce? The definition of use in commerce with regards to trademarks is found in 15 USC 1127:

Mark. The term “mark” includes any trademark, service mark, collective mark, or certification mark. Use in commerce. 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 [products] 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.

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Note: ‘Use in commerce’ may have different meanings with regards to liability than it does with regards to gaining rights for registration. See Rescuecom Corp. v. Google Inc., 562 F. 3d 123 (2nd Cir. 2009). A restrictive definition of "use in commerce" as set forth in §45 defines standards of qualification for an owner to register a mark and receive the benefits and protection of the Trademark Act. These standards are not the same definitions as used for determining liability.

Does Registering For a URL (domain name) Using My Trademark Qualify As A Use In Commerce? Just using a name as a domain name is not a trademark use.

TMEP §1215.02: A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark, as depicted on the specimen, must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website. See In re Roberts, 87 USPQ2d 1474, 1479 (TTAB 2008) (finding that irestmycase did not function as a mark for legal services, where it is used only as part of an address by means of which one may reach applicant’s website, or along with applicant’s other contact information on letterhead); In re Eilberg, 49 USPQ2d 1955, 1957 (TTAB 1998).

Is the Date That I Registered My Domain Name My First Use in Commerce? Only if your web site is also using the domain name as a trademark in a valid manner already. Web pages that do not show a proper use in commerce are common refusals as specimen refusals.

Does My Letterhead Count as a Use In Commerce? Maybe, depending on use. If the letterhead just identifies the trade name (business entity), it may not function as a use in commerce. Excerpt from TMEP §1202.01: In re Diamond Hill Farms, 32 USPQ2d 1383 (TTAB 1994). DIAMOND HILL FARMS, as used on containers for goods, found to be a trade name that identifies applicant as a business entity rather than a mark that identifies applicant’s goods and distinguishes them from those of others.

Trademark Use In Commerce [filing basis 1a] Must Be Open and Public (and not just in the planning-to-use stages).

"Mere adoption (selection) of a mark accompanied by preparations to begin its use are insufficient . . . for claiming ownership of and applying to register the mark. “At the very least," in order for an applicant to meet the use requirement, "there must be an open and notorious public offering of the services to those for whom the services are intended." Aycock Engineering, Inc. v. Airflite, Inc., 560 F. 3d 1350 (Fed. Cir. 2009). (internal citations omitted)

Is having my trademark on a business plan a use in commerce? [A] mark is not "used" when it is presented to a potential customer as part of a business plan; it must be employed in commerce such that it distinguishes the goods or services of a seller from others in the marketplace. McCarthy on Trademarks & Unfair Competition § 16:1 (4th ed. 1996); see also Allard Enters. v. Advanced Programming Res., 249 F.3d 564, 571-72 (6th Cir. 2001) (distinguishing federal registration of a mark from common law ownership of a trademark). Welsh v. Big Ten Conference Inc., 89 USPQ2d 2035 (N.D. Ill. 2008).

How Do I Show Use In Commerce for My Product? Specimens on Labels, Containers or Displays Show Use In Commerce for Trademarks (goods or products).

According to the TMEP, "a label is an acceptable specimen" where the mark "is applied to the goods or the containers for the goods," even by shipping or mailing labels. § 904.03(a). On containers, "a showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen." § 904.03(c). Thus, a product box that bears the trademark, but does not display a picture of the goods or allow customers to see the goods, may be an acceptable specimen. "Solid products have greater flexibility, inasmuch as the mark may be impressed directly on them during the manufacturing process. Of course, use on their containers or associated displays is equally acceptable.". As to displays associated with goods, the Board has found that a display bearing a trademark for chemicals at a trade show booth was an adequate specimen, even though the chemicals were not present or visible at the booth. . .  Thus, tangible specimens—whether labels, containers, or displays—can show use in commerce by describing the goods in sufficient detail in relation to the marks. (internal citations omitted)

In re Sones, 590 F. 3d 1282 (Fed. Cir. 2009)

How Do I Show a Use In Commerce for My Services? Acceptable specimens for services normally consist of advertisements, displays, or signage (TMEP 1301). A service mark specimen must show use of the mark “in the sale or advertising of services.”  Trademark Act Section 45, 15 U.S.C. §1127; 37 C.F.R. §2.56.  Therefore, a specimen is unacceptable if it does not show use of the service mark in relation to the identified services.  There must be a direct association between the mark sought to be registered and the services specified in the application, with sufficient reference to the services in the specimen to create this association.  In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999); In re Adair, 45 USPQ2d 1211 (TTAB 1997); In re Restonic Corp., 189 USPQ 248 (TTAB 1975); TMEP §§1301.04 et seq.

Are There Other Ways Use In Commerce Can Be Accomplished? Use In Commerce for Goods Can Be Established Is By Transportation.

The requirement for public awareness of the mark is a consistent theme. "The use in commerce required for obtaining a federal registration is generally congruous with the required use of a mark for obtaining ownership under the common law.... Transportation in commerce generally constitutes a `use' without a sale as long as the use is `open and notorious' and before potential customers." Societe de Developments et D'Innovations des Marches Agricoles et Alimentaires-SODIMA-Union de Cooperatives Agricoles v. International Yogurt Co., Inc., 662 F.Supp. 839, 853 (D.Or., 1987). See also Allard Enterprises, Inc. v. Advanced Programming Resources, Inc., 146 F.3d 350, 357-60 (6 Cir., 1998); McCarthy on Trademarks and Unfair Competition, Vol. 3 § 19:118 (" `Transportation' as an alternative to `sale,' will usually require some element of open or public use. It seems clear that `transportation,' as an alternative to `sale,' requires the same elements of open and public use before potential customers. Thus, purely intra-company shipments... do not constitute bona fide shipments to satisfy the `transportation' alternative.").

Gen. Healthcare Ltd. v. Qashat, 254 F.Supp.2d 193, 198 (D.Mass.2003)

When will my trademark register? This depends on if the application is currently a 1(a) or a 1(b) application and depends on the date when it was published for opposition. A 1(a) trademark application that is not opposed should register about 11 weeks after publication.

My Business is Just Starting Up and We Are Not Making Much Money Yet. Does That Qualify As A Use In Commerce? Trademark Use in Commerce is Not Limited to Profitable Enterprises.

Slow commercial progress, or absence of income or profit, is not a ground of cancellation of registration. Use in commerce under the Lanham Act is not limited to profit-seeking uses. The Lanham Act authorizes cancellation of abandoned marks, but a mark is not abandoned because the proprietor is encountering difficulties in the business. Aycock Engineering, Inc. v. Airflite, Inc., 560 F. 3d 1350 (Fed. Cir. 2009). (internal citations omitted)

If A Trademark is Abandoned, Can I Start Using It? Lack of Use in Commerce (nonuse for three years with no intent to resume) Results in Abandonment of a Mark Leaving Room For Another to Use the Mark. [Note that the word ‘Abandoned’ in this context actually means NOT IN USE rather than an application or registration being DEAD which is a failure to have an active registration.]

"An intent to resume use of the mark formulated after more than three years of non-use cannot be invoked to dislodge the rights of another party who has commenced use of a mark—thereby acquiring priority rights in that mark—after three years of non-use." Imperial Tobacco Ltd., Assignee of Imperial Grp. PLC v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990).

Once a mark is abandoned, it enters the public domain and another party can appropriate it. Indianapolis Colts, Inc. v. Metro. Baltimore Football Club Ltd. P'ship, 34 F.3d 410, 412 (7th Cir. 1994). With no other parties using a mark, the new user becomes the senior user of the mark. "It is axiomatic in trademark law that the standard test of ownership is priority of use." Sengoku Works v. RMC Int'l, 96 F.3d 1217, 1219 (9th Cir. 1996).

See Specht v. Google Inc (N.D. Ill., 2010).

 Trademark Checklist-

Having a trademark application that is right for you

1. Check Inherent Strength  Does your trademark consist of inherently distinctive element(s) that can be claimed for exclusive use?

Marks that are merely descriptive (or worse, generic) are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description.

2. Check Right to Use  

Does the trademark have a likelihood of confusion with prior-used trademarks (registered or unregistered)?

Likelihood of confusion refusals are very common refusals and lead to many trademark applications going abandoned.

3. Check Right to Register  Does the trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?)

4. Check Specimen  Is the trademark used as a trademark or service mark in the specimen?

Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are.

5. Check Goods and Services ID   Is the goods/services identification broad enough but not too broad?  Definite and accurate? Is the services ID as broad as it should be under the circumstances or will a narrower description distinguish it better? Is there “broad terminology, without the clutter of excruciating detail” that can describe your goods or services? In Re Safeway Prod. Inc., 192 U.S.P.Q. (BNA) ¶ 155 (TTAB 1976).

ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else.

6. Check which application form is the best for your trademark application. TEAS Plus? TEAS Standard?

Need help? Call 1-651-500-7590 or email  W@TMK.law.

Don’t assume that protecting your reputation and legal rights is too expensive, abandoning your trademark registration because of problems from office actions and refusals may result in a larger losses-loss of assumption of authenticity, loss of the right to protect from counterfeits, and loss of reputation. In today’s economy (and for the future), Intellectual Property Protection may be one of the best ways to invest in your business. Call us with questions at 1-651-500-7590.