Trademark rights in the United States are primarily based on use of the trademark. To establish trademark rights, you generally have to have “use in commerce” of your trademark with products and/or services. Once use is established, you can acquire common law trademark rights. However, these rights are relatively limited. Through federal trademark registration with the U.S. Patent & Trademark Office, you can greatly expand your rights. In order to obtain a federal trademark registration, you will have to demonstrate use in commerce of your trademark.
What Does It Mean to Have “Use In Commerce” of a Trademark?
The question of whether a mark is being used sounds pretty straightforward. You need to provide your products/services to customers using the trademark. Sometimes things can be more complex than that, though. The Lanham Act (which governs trademark law) 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.” Clearly, selling branded products would count toward use. So would providing services under a particular name, if the services are marketed under that name. There may also be use of a trademark in commerce where branded products are transported and shipped within the country.
The definition above also points out that the use must not be made merely to reserve the rights in a mark. Therefore you will want to avoid relying on the following scenarios to claim use in commerce:
- Giving away or selling products to family/friends;
- Large gaps in sales following the first use of your trademark;
- Failing to promote, advertise, or market your products/services; and
- Not making your products/services available for consumers.
If you make legitimate use of your trademark through advertising and selling your products or providing your services, you will establish common law rights to the trademark. From there, you can also look into federal registration of your trademark to enhance and expand upon those rights.
Demonstrating Trademark Use at the USPTO
In order to register your trademark, you will have to demonstrate its use to the Trademark Office. When you are required to show use depends on your application filing basis. If you file the application on an “in use” basis, you must demonstrate use when you file the application. To be clear, you must already be using the trademark for all of the products/services in your application prior to filing the application. If you do not have prior use of the trademark, your application may be rejected or the resulting registration will be subject to challenge.
If you file your trademark application on an “intent to use” basis, you do not have to have use in commerce of your trademark when you file. Instead, you will eventually file a Statement of Use. It is critical that you not file the Statement of Use before you have actual use in commerce of your trademark. Filing prematurely can also lead your application to be rejected or make the registration you receive subject to challenge. If you are unsure about your use, you should file for an Extension of Time to give you more time to use the trademark.
Regardless of whether you filed on an in use or intent to use basis, you will need to provide a proper specimen. This will be much easier once you are using your trademark in commerce. What constitutes a good specimen depends on the nature of the products/services you are providing. If you are not sure whether you have made sufficient “use in commerce” of your trademark, then you should speak with an attorney.
Are You Unsure Whether You Have Use In Commerce of Your Trademark?
If you are interested in speaking with an experienced attorney that can help you determine whether your use of a trademark is sufficient, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
