Use In Commerce For Trademarks or Service Marks (1(a))

Using a trademark in commerce gains common law rights and must be accomplished before filing a Federal USPTO 1(a) application or a state registration. State registrations require bona fide use in commerce before registration (an extension of common law rights). The USPTO’s most common filing basis-1A (about 50%) is for marks already in use in the U.S.

See Filing Basis for more information and case law on the requirements for different filing bases.

Section 45 of the Trademark Act, 15 U.S.C. §1127, defines “commerce” as “all commerce which may lawfully be regulated by Congress.” Section 45 defines “use in commerce” as follows: 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 Act, a mark shall be deemed to be in use in commerce--

(1) on goods [trademark] 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 [service mark] 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.”

Note: The proposed mark must Function as a Mark (be used properly) to show actual use in commerce.

According to the Trademark Trial and Appeals Board Manual (TTAB), interstate or intrastate commerce is sufficient to show use in commerce. Corporate Document Services Inc. v. I.C.E.D. Management Inc., 48 USPQ2d 1477, 1479 (TTAB 1998).

  

Reserving A Trademark For Future Use or Filing for ‘Intent to Use’ in Commerce (1(b))

The USPTO allows ‘intent-to-use applications under which the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. After Notice of Allowance, and prior to registration, the applicant must file an allegation of use or a Statement of Use under that states that the applicant is using the mark in commerce on or in connection with the goods or services; includes dates of use and a filing fee for each class; and includes one specimen evidencing such use for each class. See TMEP 801.01(b) for more information.

More About Use in Commerce for Gaining Rights* in Trademarks and Service Marks

« What Does the Statute Say?

Federal jurisdiction over trademark cases rests on the Commerce Clause. Definitions are 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 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.

* 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.

« 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)

« Trademark Use In Commerce for Goods Can Be Established 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)

« 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)

« Specimens on Labels, Containers or Displays Show Use In Commerce for Trademarks (goods)

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)

« 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

"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).

Web Sites Can Determine Aspects of Future Use In Commerce for 1(b) Applications

How an applicant is going to use a trademark in commerce may be determined by a trademark examiner based on a current web site. In Re Accelerate S.a.l. (TTAB 2012).

If your trademark has been refused, see Why Should I Have A Trademark Attorney Answer My Office Action, for some good reasons to consider having Not Just Patents respond to the office action for you.