Trademark 'Use in Commerce' or Intent-to-Use?

  1-800-314-3972

M-F 8-6 PST

As fUse in Commerce and Intent-to-Use are the two most common bases for filing a trademark registration application with the USPTO. If the applicant is already using the trademark in commerce at the time of filing of the application, the use in commerce basis should be claimed, not only because any statements made in the application must be true, but also because by doing so the applicant saves time and money with the registration of the trademark. However, the question of what qualifies as “use in commerce,” unfortunately, does not have a simple answer. It can only be said that the question is rather complicated even for a trademark attorney, and the answer depends heavily  on the facts of a particular situation. However, the following information from the USPTO website may help applicants decide on their own whether or not  they should claim use in commerce, or, file an “intent-to-use” application and file an allegation/statement of use later. It is to be understood that when the facts are complicated the help of a trademark attorney should be sought.

“For the purpose of obtaining Federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark.

Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce

901.02 Bona Fide Use in the Ordinary Course of Trade

The definition of use in commerce (TMEP §901.01) was amended by the Trademark Law Revision Act of 1988, to add the phrase “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 primary purpose of the amendment was to eliminate the practice of “token use,” or use made solely to reserve rights in a mark.

Some factors that may be important in determining compliance with the statutory requirement for a “bona fide use of a mark in the ordinary course of trade” are: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry.

The legislative history of the TLRA makes it clear that the meaning of “use in the ordinary course of trade” will vary from one industry to another. The report of the House Judiciary Committee stated that:

While use made merely to reserve a right in a mark will not meet this standard, the Committee recognizes that “the ordinary course of trade” varies from industry to industry. Thus, for example, it might be in the ordinary course of trade for an industry that sells expensive or seasonal products to make infrequent sales. Similarly, a pharmaceutical company that markets a drug to treat a rare disease will make correspondingly few sales in the ordinary course of its trade; the company’s shipment to clinical investigators during the Federal approval process will also be in its ordinary course of trade....

The report of the Senate Judiciary Committee stated:

The committee intends that the revised definition of “use in commerce” be interpreted flexibly so as to encompass various genuine, but less traditional, trademark uses, such as those made in test markets, infrequent sales of large or expensive items, or ongoing shipments of a new drug to clinical investigators by a company awaiting FDA approval....”

“901.03 Commerce That May Be Lawfully Regulated By Congress

The scope of federal trademark jurisdiction is commerce that may be regulated by the United States Congress. Types of commerce encompassed in this definition are interstate, territorial, and between the United States and a foreign country.

“Territorial commerce” is commerce within a territory of the United States (e.g., Guam, Puerto Rico, American Samoa, the United States Virgin Islands) or between the United States and a territory of the United States.

A purely intrastate use does not provide a basis for federal registration. However, if intrastate use directly affects a type of commerce that Congress may regulate, this constitutes use in commerce within the meaning of the Act. (mark used to identify restaurant services rendered at a single-location restaurant serving interstate travelers is in “use in commerce”); (intrastate sale of imported wines by importer constitutes “use in commerce,” where goods bearing labels supplied by applicant were shipped to applicant in United States); (automotive service station located in one state was rendering services “in commerce” because services were available to customers travelling interstate on federal highways); (billiard parlor services satisfy the “use in commerce” requirements, where the record showed that applicant’s billiard parlor services were advertised in both Kansas and New York”); hotel located in only one state has valid use of its service mark in commerce because it has out-of-state guests, has offices in many states, and advertises in national magazines); mark used to identify retail department store services located in one state was in use in commerce, where the mark was used on credit cards issued to out-of-state residents, and on catalogs and advertisements shipped to out-of-state customers).

In some cases, services such as restaurant and hotel services have been deemed to be rendered in commerce because they are activities that have been found to be within the scope of the 1964 Civil Rights Act, which, like the Trademark Act, is predicated on the commerce clause.

Use of a mark in a foreign country does not give rise to rights in the United States if the goods or services are not sold or rendered in the United States.

Offering services via the Internet has been held to constitute use in commerce, since the services are available to a national and international audience who must use interstate telephone lines to access a website.”

Should you want to read more on the subject, you can find this and other related information here: http://tess2.uspto.gov/tmdb/tmep/0900.htm#_T90101.

Protect your Ê

+$325 USPTO Fee

100% Satisfaction Guarantee.  See Details.