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What is Use in Commerce for Trademarks

Daniel Mills, Trademark Attorney

Posted Wednesday, May 4, 2016 by Daniel Mills

Anyone who has been through the trademark process or is considering it will eventually be faced with providing proof of Use in Commerce? But what exactly is Use in Commerce in trademark law. This post is meant to offer a guide to help sort it out.

First, what is commerce within the context of the law? The Lanham Act (which is the basis of trademark law in the US) defines commerce as “all commerce which may lawfully be regulated by Congress.” Although that does not include all commerce, in today’s Internet centered marketplace, suffice to say that if you have a website that sells your goods or services, then you are engaged in commerce that Congress regulates. If you engage interstate commerce, you qualify. If your goods are transported across state lines, you qualify.

But the more important question is Use in Commerce, so again, let’s turn to the Lanham Act:

The bona fide use of a mark in the ordinary course of trade, and not 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 with the services.

Let me break this down and translate.The Use has to be bona fide, in other words, it can’t be just a token offering to get through the registration process. Such token use has been used many times to get a registration, only to be the basis of a later cancellation. It is never worth it to build a structure on quicksand, so too it is never worth it to get a trademark registration based on false use. Eventually you will be sunk.

When it comes to determining what is use, it is helpful to separate goods from services, as in the definition from the Act. Showing use in commerce on goods is relatively straight forward. First, the mark has to be associated with the goods, the easiest way to do that is to:

The second step is, and this is the important part, is then you have to sell or transport the goods in commerce. Without this second step, you have merely advertised the goods and that is never enough to satisfy the requirement.

When it comes to services, advertising is OK, but the service must actually be performed in commerce, or in interstate or foreign transactions. For example, if you are a dentist and you have a trademark for your service, then merely advertising the service is not enough, you actually have to perform the service that you are advertising. That may sound obvious or even silly, but a search through trademark cancellation proceedings will show that many trademark applicants have gotten this wrong.

This is one of the most common issues I get hired to sort out by the do-it-yourselfer. The sad fact of the matter is that is costs as much, and in some cases more, to fix the problem than it would have been to hire me to file the entire application it in the first place. So when thinking of doing it yourself, think of the time and expense associated with a mistake for which you will have no recourse. We offer simple, reasonable, flat fees for trademark applications and most other trademark work.

Ruttler Mills PLLC
One Union Square, 1730, 600 University Street, Seattle, Washington 98101 US
47.6097570-122.3321200
Phone: (206) 838-6400

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