Although there is no requirement that a trademark actually be used by the applicant prior to filing a trademark application, there is a requirement that the person or enterprise seeking to obtain rights in a trademark establishes that the mark is being “used in commerce” before obtaining trademark registration. How that is established and understanding what defines the term “use in commerce” can make the difference between successful registration or a rejection.
Trademarks: Source of Goods or Services
According to the United States Patent and Trademark Office (USPTO) definition, a trademark is a “word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.”Although this definition refers to goods, trademark registration is also applicable to the distinct identification of services; however, the manner in which services may be deemed “used in commerce”is subject to a slightly different standard: with respect to goods, use in interstate commerce generally involves sending the goods across state lines with the mark displayed on the goods or their packaging. Regarding services, use in interstate commerce involves actually offering the service to customers in another state or providing a service that affects interstate commerce because of the customer base which likely frequents the services, such as hotels, gas stations, and restaurants.
“In Use”or “Intent to Use”
USPTO trademark filings are undertaken either on the basis of a trademark’s already being “in use”or on the basis of “intent to use.”According to the USPTO website, the basic difference between these two filing bases is whether the applicant has used the mark on all the goods or services. If the mark has already been used in commerce, the filing may be pursuant to the “use in commerce”basis. If it has not yet been used in commerce—but is intended to be used in the future—the filing must be done on the basis of “intent to use.”
The latter basis will require filing an additional form and remitting an additional fee that are unnecessary if one can legitimately file under “use in commerce.”The distinction is not at all trivial, and the consequences for misfiling can be severe: if in answer to the question, “Are the goods or services that the trademark represents being used in commerce?” the applicant answered in the affirmative yet had not met the “use in commerce”criteria, then a subsequent registration can be cancelled at any time due to fraud in the trademark application process.
Defining “in Commerce”
The U.S. Trademark Act specifies that the type of commerce necessary for the trading of goods or services utilizing a trademark be “commerce regulated by Congress.”Section 45 of the Trademark Act 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 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. (http://www.uspto.gov/trademarks/law/Trademark_Statutes.pdf).
Interstate vs. Intrastate
Although the conventional meaning of “commerce which may lawfully be regulated by Congress”refers to interstate commerce, i.e., that which crosses state lines, the physical transport of goods from state to state that was previously necessary in order to satisfy this meaning has given way to the technological and societal realties of the 20th and 21st centuries. Accordingly, services offered via the Internet meet the requirement of use in commerce being regulated by Congress. A single-location business, serving customers from out of state has also been deemed to satisfy this statutory element, and the mere advertising of a single business in other states has also been deemed to comply.
The Mechanics of Trademark Registration
At the time of application, your attorney will provide a specimen to the USPTO of how the mark will be used—or is already being used—in commerce on goods or with services. The sample submitted must show the mark as consumers of your goods or services will encounter it, such as on labeling, etc.
The specimen will be entered by the USPTO into a database for the purposes of a comparison search against existing marks, and the mark will be published in the Official Gazette of the USPTO and on the registration certificate.
Attorneys Debora McCormick & Stevan Lieberman of the Washington DC law firm Greenberg & Lieberman specializes in trademark application and can advise your company as to whether your proposed trademark can be registered. They can prepare your specimen and application, properly demonstrating use in commerce—or intended use in commerce—to meet the USPTO’s specifications.