Trademark Requires Use in Commerce

Clients select a name, logo, or other brand identifier for trademark registration in order to build and preserve value. While securing the trademark is critical for building a brand, the primary purpose of trademark law is to prevent consumer confusion in the marketplace. Enforcement for trademark infringement purposes requires a likelihood of confusion caused by an infringing party’s mark. Therefore, in order to register a trademark, it must be actually used in commerce. 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.

Absent a use in commerce, an application may be made for a trademark based upon the bona fide intent to use “ITU” the mark in commerce. However, registration will be withheld until applicant files the required documentation showing the use in commerce. Upon receipt of the Notice of Allowance “NOA”, the ITU applicant has 6 months to perfect the registration. You may request 5 additional extensions for up to a total of 36 months from the NOA issue date with a statement of your ongoing efforts to make use of the mark in commerce.

The power of the federal government to register marks comes from the commerce clause of the Constitution. Trademark law defines “commerce” as all commerce which may lawfully be regulated by Congress and further defines use in commerce. With respect to goods, use in commerce occurs when the mark is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto. If the nature of the goods makes such placement impracticable, then placement is required on the documents associated with the goods or their sale. The goods must be either sold or transported in commerce.

With respect to services, use in commerce occurs when the mark 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. While the placement on goods is clearly delineated, you may find the use in connection with services cloaked with ambiguity. For example, registering a mark depicting accounting services may not pass muster if a newsletter specimen is submitted. Newsletters are an acceptable form of professional advertising. However for trademark purposes the Examiner at the Trademark Office may consider a newsletter containing tax planning tips to be merely educational and not a use in commerce for accounting services. Particularly where the service provider offers multiple classes of services, the positioning of the mark in an advertisement, or on a brochure or website is critical to establish acceptable use in commerce.