Trademark right is a common law right that is obtained by
use of a mark in commerce. The U.S.
Patent and Trademark Office ("USPTO") generally requires evidence of
such use before a mark can be federally registered. This blog post aims to help you to understand
what constitutes a “use in commerce” of a mark for obtaining and protecting
trademark rights.
The Trademark Act now 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."
There are two basic elements in this requirement, “use” and “in commerce”:
1.
Use of a mark
a.
Ordinary course of trade
b.
Not a use made merely to reserve a right in a
mark
2.
In commerce
Use of a Mark
“Use of a mark” plainly means using a mark in association
with a product/goods or service. For
example, if you are selling cosmetics, use of a mark means the mark is showing
on a jar of cream you are selling. A
photo of the jar of cream bearing your mark would be the proof of use that you
can send to USPTO with your trademark application.
What if you just started your business or a new product line
and there is no regular sales yet?
"Bona fide use" may include sales made in a good faith effort
to develop a business. For example, you
just started your cosmetic business and have made sample jars of creams with
your newly designed mark printed on the jar.
You took or shipped these samples to distributors or retailers in order
to promote the sale. Or, you shipped
goods to a sales representation who then distribute them as free samples to
potential customer. You are essentially
carrying out "bona fide use of a mark in the ordinary course of a good
faith effort to establish a trade." Your samples are recognized as “use of
the mark” for trademark registration purpose.
For record keeping purpose, you should always record the first date that
you used the mark with your product because that would be the “first use” date
you put in for your trademark application.
In addition, you should always document your efforts in developing the
business including emails for scheduling the meetings with your potential
clients, the dates of meetings and photos of sample products bearing your
mark. These evidences could come in
handy when the "bona fides" of the early use of the mark is
questioned.
Use in commerce cannot be a use made merely to reserve a
right in a mark. Such uses may include token
use or sham use made solely to reserve a right in a mark, or sporadic, casual,
or de minimis uses made to keep a trademark registration alive (from being
canceled). Case law is littered with
interesting examples of such “clever uses” created to support trademark
applications. Here are a few examples of
such use:
·
shipment of six boxes of various paper goods
expressly to establish a basis for filing a trademark application and there
were no further shipments for some 18 months;
·
a single shipment of one jar of salt from one
corporate officer to another for no charge;
·
sale for $2.50 of 12 bank book holders, followed
by instructions not to offer them to prospective customers;
·
sale of a few dollars' worth of women's
sportswear to a cooperating company which immediately returned the goods to the
seller;
·
"sweetheart" shipment of six cans of
grapefruit juice to a one-third shareholder of the shipper at no apparent
charge;
·
shipment of adhesive fingerprint seals to a
personal friend (who was not engaged in any relevant business) to use "as
he saw fit"; and
·
Proctor & Gamble's strategy to keep alive
scores of "minor brands" by annually shipping fifty cases of each
product to normal customers for $2 per case (regardless of the product
shipped), but did not monitor what became of the goods at the retail level nor
promote awareness of the minor brands either inside or outside of the company.
Furthermore, the trademarked products were simply other P&G products that
had been relabelled, and if P&G did not produce the product in question, it
simply relabelled those of a competitor.
You can file a trademark application based on “actual use”
or “a bona fide intent to use” a mark.
However, even if your file with an intent to use, you must use the mark
by demonstrating actual use before a registration will be issued. After obtaining federal registration of your
mark and between the fifth and sixth anniversaries of such registration, you
must file with the PTO an affidavit that the mark is in use in U.S. commerce
(or explain the circumstances justifying non-use). Otherwise, the registration will be cancelled
automatically. Evidence of use must also be filed at every ten year renewal of
the registration.
Use in Commerce
“In commerce” includes all commerce that can be regulated by
Congress. This includes interstate commerce,
foreign commerce, commerce within the District of Columbia and commerce with
Indian tribes. “Use in commerce” also
includes the sale or transportation of goods or services that affect commerce. For example, services are usually deemed
"in commerce" if they are offered to customers who travel across
state lines. Goods are usually deemed to
be "in commerce" if they are shipped over state lines by the mark
owner's effort to further a sale. Use in commerce may also occur when goods are
shipped interstate in furtherance of a potential sale, such as for display at a
trade show. However, if a purchaser takes a purchased goods over a state line,
it is not regarded as "in commerce."
Intrastate use of a mark does not count as a “use in
commerce.” This means that, in the above
“shipping the sample” scenario, the samples must be shipped across state
line. In addition, purely
intra-corporate transactions have been characterized as "secret" or
otherwise non-public uses, and cannot support a trademark registration. For example, if your company has multiple
sites in various states, shipping a product from one site to another does not
count as “interstate commerce” even if the product technically crossed state
line.
In summary, use is the root of a trademark. Trademark rights and federal registration start
and grow from the use. Without use, marks wither and die. Understanding what it
means to use a mark is therefore important to ensuring that trademark rights
are properly acquired and maintained.
Thanks for reading.
Connie
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