What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?

Introduction

In a trademark or service mark application filed with the USPTO, and which is based on use in commerce, the mark must be in used in commerce on or in connection with all the goods and services listed in the application as of the application filing date. Use in commerce means use of the mark in all commerce which may be lawfully regulated by the U.S. Congress. An example of use in commerce activity are sales to out-of-state customers and shipment of the sold goods, having the mark on them, across state lines, to the customers’ out-of-state addresses (e.g., from California to Arizona). Let’s look at some more specific examples below.

For Services

The mark used in association with services is called a Service Mark. For services, the mark must be used to “render” those services in commerce. Advertising the services using the mark to potential customers from more than one state is typically enough (e.g., catalogs and advertisements shipped to out-of-state customers). Also, if not already providing the services, the applicant must be ready to provide the services. Offering services via the Internet has been held to constitute use in commerce, since the services are available to a national and international audience who must use interstate telephone/internet lines to access a website. Certain services such as restaurant and hotel services, although they are typically provided locally (e.g., in one city only) have been deemed to be rendered in commerce because they are activities that have been found to be within the scope of the 1964 Civil Rights Act, which is predicated on the commerce clause, and thus such services can be regulated by the U.S. Congress.

For Goods

The mark used in association with goods is called a Trademark. For goods, things are more complicated. Goods (e.g., computers) must have the mark on them, or on the packaging, or the mark has to be in a product display or on a webpage next to the goods, where the customers can purchase the goods. A good example of use-in-commerce of the mark on goods (e.g., shoes) is applying the mark to the goods or to the packaging (e.g., via a sticker) selling the goods to out-of-state customers and shipping the sold goods to the customers’ out-of-state addresses (e.g., from California to Arizona).

What about a sale in California to customers from Arizona who came in your California store, bought the goods and took them home themselves? That is likely not sufficient to claim use in commerce. What about advertising the goods, such as on a website? Not enough. Advertising alone may be enough for services, but not enough for goods. What about when you import goods with the trademark on them from for example China with the mark affixed to the goods or their packaging? If you also sell the goods with the trademark on them after you import them, then claiming use in commerce is likely appropriate. What about when you export the goods, let’s say, to Europe? That is likely use in commerce, as the export activities can be regulated by the U.S. Congress. What about transportation by the trademark owner of the goods, with the trademark on them, across state lines? If a sale of the goods follows, use in commerce can likely be claimed. If a sale does not follow, or precede the interstate transportation, i.e., a sale of the goods never occurs, but the goods with the trademark on them are exposed to the public (e.g., at a trade show) in addition to being transported across state lines, use in commerce claim is likely appropriate. Note however that the real goods have to be transported and exposed to the public. A mock-up of the product or a picture of the product for example would not do.

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