(949)829-2186 sean@lynchllp.com

The trademark use requirement divides applications into two different types: “intent to use” and “actual use.” Whether you need to file an intent to use application or an actual use application depends on your “date of first use in commerce.” As with any legal concept, this phrase can be read by lay people… and the lay understanding can be completely ignored because law is like that.

So what is the trademark use requirement? Use in commerce is defined in TMEP 903.02:

the date of first use in commerce is the date when the goods were first sold or transported, or the services were first rendered, under the mark in a type of commerce that may be lawfully regulated by the U.S. Congress, if such use is bona fide and in the ordinary course of trade.

But what is “commerce that may be lawfully regulated by the U.S. Congress”? That’s a complicated question, but it can be boiled down to interstate or foreign commerce.

Here is how it’s defined in section 45 of the Trademark Act, 15 U.S.C. §1127,

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.  For purposes of this Act, a mark shall be deemed to be in use in commerce–

(1) on goods when—

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it 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.

Reading the law is nice and all, but it always helps to look at a few examples. Here are some example of bona fide use in commerce.

  • If you sell a good across state lines, that is “use in commerce.”
  • If you advertise and subsequently provide services in more than one state, that is “use in commerce.”

On the other hand, here are some examples that are not bona fide use in commerce

  • “Token” sale of your goods across state lines for purposes of meeting this requirement.
  • Shipping goods from one corporate office to another in a different state for no charge
  • Shipping goods to a friend in another state to do with them as he sees fit

The above examples are pretty obvious, but some transactions can be considered too sporadic, casual, or nominal and will not qualify as sales “in the ordinary course of trade.” Some of these borderline cases of trademark use include:

  • sale of a single jar of cold cream for $1.27 over a four year period where there were no definite plans for what goods the mark would be applied to;
  • over a two year period, making monthly shipments to wholesalers of acne medicine for less than $1.00, without any evidence that the goods reached consumers;
  • a single sale of china for $1300 with no subsequent sale or other commercial activity for seven years;

Takeaways

When you’re ready to file a trademark application, make sure you look into whether your “use” meets the trademark use requirement for a federal registration. If you have not yet met the “use in commerce” requirement, then you are limited to filing an “intent to use” application and later proving use by way of a “statement of use.” But if you do meet the requirement, then you can file an “actual use” application right out of the gates, saving you money down the road since you will not be required to submit a statement of use at all.