Navigating the Use in Commerce Requirement for Trademarks
In trademark law, grasping the Use in Commerce prerequisite is essential. To qualify for federal trademark protection, a mark must be utilized in what’s known as interstate commerce. Section 45 of the Trademark Act outlines Use in Commerce as the “Bona Fide Use” of a trademark in regular trade practices. However, what constitutes “Bona Fide Use” is somewhat subjective. The USPTO employs a standard akin to “You Know it When You See It” to assess this requirement.
Essentially, demonstrating Bona Fide Use involves two main steps: firstly, proving that the trademark is genuinely being used in connection with the sale of a good or service, and secondly, showing that these goods or services are being sold in Interstate commerce.
Practical Application of Using a Trademark in Commerce
The manifestation of Bona Fide Use varies depending on whether the applicant is filing for “Goods” or “Services”.
For “Goods,” where the trademark is used in conjunction with physical items, placing the trademark directly on the product or its packaging, displays, tags, or labels suffices. If this isn’t feasible, using the trademark on associated documents during the sale of the goods is acceptable.
In the case of “Services,” where the trademark is linked to the provision of a specific service, it must be prominently featured in marketing materials to convey its association with the service offered. For example, a Child Psychologist seeking a trademark for the name of their practice would need to ensure its clear inclusion in their promotional materials.
The Significance of Meaningful Sales
Trademark law emphasizes that the use of a trademark must involve meaningful sales of the goods or services. Merely selling a single product doesn’t establish the trademark as a recognizable source identifier worthy of protection. This concept, known as “Token Use,” is insufficient to confer trademark rights.
Historically, token use was accepted by the USPTO until 1989. However, this changed, and now even a single sale doesn’t meet the criteria for Use in Commerce. Courts scrutinize whether sales are conducted in good faith to establish a trade, distinguishing them from “Sham Transactions” aimed solely at fulfilling legal requirements.
Determining what constitutes a meaningful sale lacks a precise numerical benchmark. However, a genuine effort to engage in business activities is key, rather than merely satisfying legal formalities.
Instances that Fall Short of Bona Fide Use
Certain activities do not meet the statutory definition of “bona fide use in the ordinary course of trade.” These include:
- Sales to family or friends.
- Single shipments or sales of goods.
- Selling items at significantly reduced prices for promotional purposes.
- Instances where sales are sporadic or nominal.
Forum of Commerce and Lawful Use
Trademark use must occur in a regulated forum of commerce, such as interstate commerce, to qualify for protection. Additionally, the use must be lawful; otherwise, trademark priority cannot be established.
For instance, trademarks associated with illegal products like cannabis cannot be registered federally. However, companies in this sector may adopt strategies such as diversifying into legal products to obtain trademark protection.
Understanding the Date of First Use
Determining the date of first use in commerce is essential for trademark registration. It typically corresponds to when the goods or services were first sold or advertised in connection with the trademark.
Non-Use and Abandonment of Trademarks
Maintaining active use of trademarks is crucial to avoid abandonment. Failure to use a trademark in commerce can result in abandonment, where the mark loses its protection.
While a prolonged period of non-use may raise abandonment concerns, legitimate reasons may justify the suspension of use, preserving the trademark rights.
Consult with a Trademark Attorney
Navigating the complexities of trademark law requires expert guidance. Our team of trademark attorneys is here to assist you. Reach out to discuss your trademark needs and ensure proper registration and protection. Get in touch with us today at (480) 875-2700 or via email at . You can also fill out our contact form.