ORIGINAL CODE:

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

Published 17/04/2019 by Marin Cionca

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.

Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.

BLOG

Marin11/18/2015 6:11:11 PM

PTAB Decisions Give Examples of Patent Eligible Subject Matter
More
Marin11/18/2015 6:15:40 PM

Covered Business Method Claims Are Not Required to Particularly Target Financial Industry
More
Marin11/18/2015 7:31:35 PM

When Is a Thesis Prior Art?
More
Marin11/19/2015 2:13:05 PM

An Innovator’s Dilemma: Design or Utility Patent?
More
Marin1/28/2016 9:10:56 PM

How Unpredictability Can Affect Obviousness Challenges
More
Marin1/28/2016 9:15:16 PM

The Patent Trial and Appeal Board Designates Two Decisions as Precedential
More
M. Cionca and I. Kim2/4/2016 5:55:16 PM

Software Inventions Are Still Patentable!
More
Marin Cionca2/16/2016 6:34:53 PM

In IPRs, patentees have to show that substitute patent claims are patentable
More
I. Kim PhD2/26/2016 8:47:51 PM

The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.
More
Iris Kim, PhD3/25/2016 8:34:14 PM

Challenging a Claim’s Validity with Different Standards of Claim Construction
More
Marin Cionca5/17/2016 8:57:23 PM

Patent Claims Rejection Based on Inherency
More
Iris Kim, PhD6/1/2016 7:04:50 PM

The Patent Trial and Appeal Board Designates Five More Decisions as Precedential
More
Marin Cionca9/6/2016 9:26:12 PM

Patent Case Law: New Example of Software as Patentable Subject Matter
More
Marin Cionca9/15/2016 9:47:39 PM

Patent Law Alert: Federal Circuit Opens Door for More Software Patents
More
Marin Cionca2/21/2017 12:30:52 AM

Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable
More
Marin Cionca4/25/2017 9:48:49 PM

Monetization of Patents: How to Make Money with Patents
More
CIONCA - Staff6/15/2017 5:32:14 PM

Patent Law: Challenging the Patent Claim Definiteness Requirement
More
CIONCA - Staff6/28/2017 8:26:07 PM

Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution
More
CIONCA - Staff8/9/2017 5:39:58 PM

Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable
More
CIONCA Staff8/20/2017 3:16:11 PM

CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued
More
staff9/15/2017 9:33:30 PM

cionca
More
staff9/27/2017 5:00:12 PM

Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience
More
staff9/27/2017 5:12:07 PM

CIONCA - Patent and Trademark Law Attorney
More
Staff9/28/2017 7:27:22 PM

CIONCA
More
Staff11/3/2017 4:20:04 PM

An Introduction to Provisional Patent Applications
More
11/10/2017 6:47:44 PM

An Introduction to Design Patent Applications
More
11/17/2017 1:24:20 PM

An Introduction to Patent Searches
More
12/1/2017 8:01:27 PM

An Introduction to Patent Cooperation Treaty Applications
More
12/26/2017 6:04:25 PM

CIONCA Sets Foot in San Francisco
More
1/2/2018 7:47:09 PM

The Lanham Act: Disparagement Provision Violates the First Amendment
More
CIONCA Team1/17/2018 8:12:06 PM

A Fork in the Road: Production or Protection?
More
CIONCA Team2/16/2018 4:07:48 PM

Fashion and Intellectual Property
More
3/8/2018 1:25:46 PM

Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance
More
3/20/2018 12:50:05 PM

Andrei Iancu - New Director of the USPTO
More
CIONCA Staff4/13/2018 9:10:04 PM

It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision
More
CIONCA Staff4/20/2018 5:25:25 PM

USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.
More
5/4/2018 7:37:51 PM

The Hague System for Protection of International Designs
More
CIONCA IP5/17/2018 9:54:58 PM

Marin Cionca Presents at OCIPLA May 2018 Luncheon
More
7/3/2018 7:44:33 PM

Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation
More
Marin Cionca7/31/2018 6:50:05 PM

My patent expired? Can I still sue for patent infringement?
More
Staff8/16/2018 4:24:01 PM

Correcting or Changing a Patent After Issue Through the Central Reexamination Unit
More
Staff8/31/2018 7:26:58 PM

Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout
More
CIONCA Team Member9/17/2018 4:33:20 PM

Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.
More
Marin Cionca10/1/2018 7:42:12 PM

Can I Register a Color as a Trademark or Service Mark?
More
CIONCA Team Member10/16/2018 6:50:31 PM

A Double-Edged Sword: Benefit of Priority or Longer Patent Term
More
CIONCA Team Member11/19/2018 1:07:51 PM

The Appeals Process
More
Marin Cionca12/8/2018 8:35:06 PM

IP Assets - Procurement, Enforcement, Monetization
More
CIONCA Team Member12/18/2018 6:12:48 PM

Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname
More
CIONCA Team Member1/4/2019 4:12:21 PM

In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement
More
Marin Cionca1/23/2019 9:45:30 PM

Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent
More
CIONCA Team Member2/5/2019 7:22:27 PM

TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC
More
CIONCA Team Member2/19/2019 7:12:46 PM

Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims
More
Marin Cionca3/1/2019 9:36:50 PM

USPTO Director Andrei Iancu Visits Orange County!
More
CIONCA Team Member3/21/2019 3:49:43 PM

Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.
More
CIONCA Team Member4/3/2019 7:25:37 PM

The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential
More
Marin Cionca4/17/2019 3:48:33 PM

What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?
More
CIONCA Team Member5/7/2019 7:13:41 PM

The Federal Circuit Defines a Technological Invention
More
CIONCA Team Member5/20/2019 8:25:57 PM

PTAB Designates Cases as Precedential
More
Marin Cionca6/11/2019 8:43:17 PM

Can I Successfully License My Invention?
More
CIONCA Team Member6/27/2019 7:41:52 PM

Obviousness in a Single Prior Art Instance: Game and Technology Co., LTD., v. Activision Blizzard INC., Riot Games, INC.
More
CIONCA Team Member7/5/2019 2:22:42 PM

In re: Global IP Holdings LLC: Broadening Claims Through Reissue Applications
More
CIONCA Team Member8/5/2019 2:29:33 PM

Is Speculation Enough Evidence for an Appeal?: General Electric Company v. United Technologies Corporation
More
CIONCA Team Member8/19/2019 7:46:17 PM

In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction
More
CIONCA Team Member9/4/2019 7:20:46 PM

Guangdong Alison Hi-Tech Co. v. International Trade Commission: Objective Boundaries
More
Marin Cionca9/27/2019 9:32:48 PM

Can an Online Patent Attorney File My Patent?
More
CIONCA IP10/7/2019 5:44:50 PM

A Decision in Henny Penny Corporation v. Frymaster LLC
More
CIONCA IP10/16/2019 1:28:13 PM

To Use or Not to Use: The Statutory Period of Trademark Nonuse Prior to Presumed Abandonment
More
11/15/2019 8:15:11 PM

Liqwd, Inc. v. L’Oreal USA, Inc.: Objective Indicia and Copying
More
Marin Cionca12/9/2019 8:07:20 PM

A “glove” approach to patent claim construction
More

Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899

VERIFY

CONTACT INFO

TOLL FREE 800-454-1360
GET IN TOUCH
SEE MORE CONTACT INFO

About CIONCA® IP Law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.

HOME

Let’s talk!

We’d love to hear from you…we just need a little info
about your plans to take over the world!

P.S…Feel free to call us! (800)985-9198

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

BLOG

CONTACT INFO

Let’s talk!

QuickContact 24/7

1-800-454-1360