Navigating the Complex Terrain of "Use in Commerce" in Trademark Applications

When pursuing federal trademark protection with the United States Patent and Trademark Office (USPTO), providing the date of first use "in commerce" is a critical step.

But in the digital age, where business operations often extend to the online realm, determining what constitutes "use in commerce" can be confusing. In this article, we break down the intricacies of this crucial requirement and offer clarity on what it means to use your mark "in commerce."

What is a trademark?

Some trademarks are more recognizable than others! 

Before delving into the complexities of "use in commerce," let's revisit the fundamental concept of trademarks.

A trademark, whether a word, phrase, or design, serves as a symbol that informs consumers about the source of goods and services. 

What does use in commerce mean?

Let's look at how trademark law defines use in commerce:

The Lanham Act, also known as the Trademark Act, defines "use in commerce" as:

The bona fide use of a mark in the ordinary course of trade, not merely to reserve rights in a mark. It outlines that a mark is considered in use in commerce when:

1. For goods: The mark is affixed to the goods, their containers, displays, labels, or relevant documents, and the goods are sold or transported in commerce.
2. For services: The mark is used or displayed in the sale or advertising of services, and the services are rendered in commerce, across state lines, or internationally.

Trademark use in commerce examples

You may now be wondering what other examples there may be for use in commerce, well consider the following:

• Domain use: The use of the trademark in a company's website or in the domain name itself is considered use in commerce. A popular example of this is "www.amazon.com," which serves as the online gateway to the Amazon e-commerce platform.
• Mobile applications: Trademarks that appear within a mobile app interface, such as the name "Instagram" and the Instagram app icon, represent trademark use in commerce. Mobile apps often prominently display the trademark to provide a branded and recognizable user experience.
• Business correspondence: Incorporating your trademark into email correspondence with clients, typically in the email footer, is another way of using the trademark in commerce. This not only serves to brand your communications but also reinforces your company's identity and may even protect your trademark rights.

What are the requirements for using a trademark in commerce?

At its core, "use in commerce" necessitates two main criteria:

1. Using the mark: This requirement typically involves using the mark on the product, its packaging, a point of sale display, or an active website for goods. For services, using the mark in advertising, at a physical storefront, or on a service-specific website is crucial. Using the mark should convey information about the source of goods or services to consumers.
2. Selling goods or providing services in commerce: The second criterion involves assessing whether you have actually made sales or provided services. While this may seem straightforward, certain situations can be ambiguous. For instance, crowdfunding campaigns to fund a product before it's available for sale can raise questions about "use in commerce."

Trademark intent to use vs use in commerce

The difference between these two trademark concepts is timing.

"Intent to Use" signifies a future intention to use a trademark, while "Use in Commerce" indicates the current, real-world use of a trademark. 

Businesses often begin with "Intent to Use" to secure rights for a brand they plan to launch, and eventually transition to "Use in Commerce" when the trademark is actively in commercial use. This distinction is vital in the process of trademark registration and protection.

Understanding complexities and gray areas

The assessment of whether an action qualifies as "in commerce" is often subject to varying interpretations. 

Generally, if goods cross state lines or international borders or if services cater to customers who cross state lines or international boundaries, it meets the requirement. Nevertheless, the law often dwells in gray areas, and the specific circumstances of your case may require a more nuanced evaluation.

Consulting a trademark attorney

Given the intricacies and potential ambiguities, seeking advice from a trademark lawyer is highly advisable. An attorney can offer guidance on how best to proceed in your unique situation. They can help you establish a solid foundation for your trademark registration. This reduces the risk of opposition or registration cancellation due to inaccuracies.

Consider carefully — take your time

"Use in commerce" is a pivotal aspect of trademark law that a trademark applicant must carefully consider. To ensure that you provide accurate information to the USPTO and safeguard your brand's rights, it's essential to understand and meet this requirement.

As a trademark owner, if you find yourself in doubt regarding your specific circumstances:

Getting in touch with one of our trademark attorneys is the wisest course of action to navigate this complex terrain effectively.