Trademarks are words, symbols or other devices that serve to identify the source of a trademark owner’s goods and services and to distinguish those goods and services from another person or company’s products and services. (15 U.S.C. § 1127) While federal law allows people and businesses to apply for trademark registration prior to the use of their trademark or service mark (collectively referred to as “trademarks” or just “marks”) the registration will not issue until or unless the applicant proves to the United States Patent and Trademark Office (USPTO) that the applied-for mark is being “used in commerce”.
Satisfying the “use in commerce” requirement gives a number of applicants difficulty during the registration process. “Use in commerce” is use of the mark “…in the ordinary course of trade, and not made merely to reserve a right in the mark.” 15 U.S.C. § 1127 Use in commerce with respect to goods means that (1) the mark is displayed on the goods or their containers, displays, tags or, failing all else, the documents associated with the goods and (2) that the goods have been either sold or transported “in commerce.” It is not sufficient to simply mark the goods and offer them for sale. This means that the goods must actually exist at the time “use in commerce” is claimed to have begun. “Use in commerce” with respect to service marks means (1) the mark is displayed in connection with the sale or advertising of the services and (2) the services are rendered in commerce.
Use “merely to reserve a right in the mark” or “token use” of the mark puts the mark owner’s registration in jeopardy. For example, selling a product to a friend or transporting it to a different branch of the same company for the sole purpose of satisfying this requirement does not satisfy the “use in commerce requirement.” However, that is not to say that making an initial sale for the purpose of satisfying the “use in commerce” requirement is by itself a problem. As long as the mark owner can demonstrate a bona fide intention to keep using the mark in commerce, the intent surrounding the initial sale does not prevent the sale from constituting proper “use in commerce.” In addition, token use can be inferred from the mark owner’s failure to make any more than a few sales for an extended period of time after “use in commerce” was alleged to have begun. However, since the USPTO does not stringently investigate whether the use relied upon by an Applicant really satisfies the requirement, this issue tends to be brought up after a lawsuit has been filed. Participation in a lawsuit is a very costly way for a mark owner to learn that their registration is invalid.
Analysis of this particular issue should begin before an application is filed when certain decisions are being made, including selecting the classes in which to apply for registration. Failure to properly construe and satisfy the “use in commerce” requirement can lead to a lot of unnecessary headache. Should you need additional guidance or individualized advice, please contact the law firm directly to discuss your individual legal needs.