Trademark Use in Commerce
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In order for a trademark to earn rights, it must first be used in commerce. This means the mark must be connected to the goods/services it promotes—on a product directly, on packaging, on a website—and the goods/services must be for sale.
There's a lot to wrap your head around when it comes to use in commerce, so we've answered some common questions here.
Does a Trademark Have To Be Used in Commerce?
Yes. Trademarks have to be used in commerce to receive rights and qualify for federal registration. The United States Patent and Trademark Office defines use in commerce as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” The sales must be genuine, not just for show. (Don’t worry—we’ll dive into this more later.)
Use in commerce isn’t a one time thing. In order to maintain rights, a trademark must continue to be used alongside the goods/services it promotes, and those goods/services must continue to be purchased. If a trademark or its accompanying products fall by the wayside, the mark will lose its use in commerce status, potentially be abandoned, and lose its rights.
In the past, an additional use in commerce requirement was that sales had to occur across state lines (or across other borders regulated by Congress). This is no longer required by the USPTO.
Use in commerce can be confusing. With our Trademark Service, we can help determine whether or not your mark currently qualifies as in-use.
Use in Commerce for Goods vs. Services
There are a few differences in how to establish use in commerce for goods vs. services. But regardless of what you’re selling, the trademark application requires proof of a mark’s connection to its goods/services through examples called “specimens.” The application will also ask for the date of first use in commerce.
Note: To earn an earlier first use in commerce date without having to sell goods/services quite yet, you can submit an application with an intent-to-use filing basis.
What is use in commerce for goods?
For trademarks connected to goods, here are a few use in commerce rules to keep in mind:
- Date of first use in commerce is typically established once products are sold or transported. Remember, sales must occur in the “ordinary course of trade.” This means that one-offs or sporadic sales likely don’t apply.
- Acceptable specimens include the mark featured on goods directly, on packaging, or on tags or labels. The mark could also appear on a website connected to the product as long as there’s a way to purchase the goods.
- Marketing and advertising materials generally do not fulfill the use in commerce need for goods.
What is use in commerce for services?
For trademarks connected to services, remember these use in commerce standards:
- Date of first use in commerce occurs once services are provided. Services must actually be purchased by customers, not simply be available for purchase. And just like with goods, services must be consistently sold to qualify.
- An acceptable specimen includes the mark featured on a website for the services if a purchase function also exists. Advertising and marketing materials featuring the trademark are also acceptable.
Trademark Use in Commerce Examples
The USPTO wants your trademark to promote goods/services that are regularly being bought and sold. With this in mind, here are a few examples of what could qualify as trademark use in commerce:
- An organic cotton t-shirt company, Earth Seam, sells plain shirts that feature the brand’s name/logo on the inside tag. The shirts are sold at local markets and through the business’s Instagram.
- Yoga studio Mind Hum has a website heavily featuring its trademark (in this case, the studio’s name). Classes are in session daily, and clients purchase yoga class packages through the website.
- A cell phone accessories company, Brickline, sells phone and headphone cases. The products themselves are logo-less, but the packaging and shipping materials are printed with the to-be trademarked logo. A business website is set up that includes images of the logo, as well as a shopping cart feature.
What Is Not Use in Commerce?
Figuring out what is not use in commerce can be tricky. Somewhat confusingly, there is not a set dollar amount or number of sales that have to be met for use in commerce to occur.
But since we know the USPTO wants sales to happen in the “ordinary course of trade,” we can look at non-ordinary trade to help determine what doesn’t qualify as use in commerce.
- Selling one branded t-shirt to your brother for $1
- Offering a one-time yoga class to several friends
- Sending a box of sample phone cases to a prospective buyer free-of-charge
The USPTO could presumably see these examples as attempts to simply reserve earlier first use in commerce dates. In such circumstances, your trademark application would likely be refused through an office action.