Raleigh: 4801 Glenwood Avenue, Suite 200, Raleigh, NC 27612.
Albert Minn is a patent attorney with 11 years of experience practicing before the United States Patent and Trademark Office.
Using Trademarks in Commerce
To successfully register a trademark with the USPTO, usually, the applicant must be first to use the trademark in commerce. But, what does that mean? What usage qualifies and satisfies these requirements? Specifically, the Lanham Act states:
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.
But what do those words actually mean? How much usage is enough? What if I haven’t really used the mark in commerce yet? Businesses entertain these and many more questions when looking to protect their brand identity and intellectual property.
Actual Use vs. Intent to Use; Goods vs. Services
If a business hasn’t used the mark in commerce yet, the solution is relatively simple: an applicant can file an Intent-to-Use trademark application. An Intent-to-Use trademark application provides for an applicant to apply for a trademark when the mark has not been used in commerce, yet.
But, what if you’ve been using the mark in commerce. What examples of commerce suffice for actual use? How are the requirements different for using a mark with goods vs. services? As noted above, the Lanham act does consider advertising and marketing as “actual use” of the mark when the mark is associated with services and the services are actually rendered in commerce. However, when dealing with a mark associated with goods, using the mark in marketing materials or advertisements for the good will usually not suffice as “actual use”. When dealing with a mark used in conjunction with goods, the trademark owner should consider the following factors to establish actual use:
- Avoid mere internal shipments between various offices of the trademark owner
- Comply with federal regulatory statutes, such as laws governing the labeling of food, drugs, and cosmetics
- All sales should be bona fide transactions made in the ordinary course of trade
- Avoid unsolicited shipments
- Avoid artificially low invoice price
- Avoid product return from the purchaser after initial shipment
- Avoid having non-owner use trademark first
- Trademark owner should make initial shipments
Likewise, the trademark owner should consider the following factors when establishing use in commerce for services:
- Place ads bearing the mark and identifying the services in media that circulates across state lines
- Broadcast the mark on radio and TV
- Advertise on billboards that are visible to interstate highways
- Encourage patronization by interstate travelers
- Collect credit card records, invoices, and other billing data showing patronage by out-of-state residents
If you have questions about whether your usage of a trademark satisfies the requirement to use the mark in commerce, or if you are thinking about protecting a new possible trademark that you haven’t used yet, give Grell & Watson a call at (919) 825-3309!