646 666 9601 [email protected]

Trademark usage in commerce is essential to establish trademark ownership.

Trademark Use in Business

Trademark usage in commerce is essential to establish trademark ownership. Historically, commercial usage has been defined as a product, name, packaging, or other kind of branding that is sold beyond state boundaries rather than only inside a state.

Obtaining a Trademark Registration

Even if you possess a trademark just by using it in commerce, you may wish to register it. You may do so before you begin using the trademark to reserve the chosen name or mark. To submit a trademark application, some lawyers charge about $195.

Once your trademark application has been reviewed and approved by the United States Patent and Trademark Office (USPTO), you will be required to produce evidence of its usage in commerce.

Establishing Commercial Use

In your federal trademark application, you must provide the date you first used the mark, as well as the date it was first used in commerce. What constitutes commercial usage will depend on whether your trademark will cover items or services. Proof of commercial usage for items might include:

Product labelling, packaging, or tags

The product itself, with the visible mark

Brochure or merchandising display

Advertising and marketing materials alone do not provide evidence of commercial usage for a product. They may, however, be used for services if the mark is conspicuously displayed and the services are explained.

Because the Lanham Act requires Congress to legitimately govern commercial use of a trademark, some registration rules apply to federal trademarks. The USPTO and courts have described this as the requirement to provide products or services across state boundaries or import them from overseas. Shipped items must carry the relevant trademark. Because it is not congressionally controlled, selling items or services inside your own state is not deemed use in commerce. However, in the age of internet shopping, this difference is less essential than it formerly was. Federal law considers selling items to foreign countries to be usage in commerce.

Token Application of a Mark

For a trademark application to be successful, usage in commerce must go beyond token use. Although no monetary or unit threshold for bona fide use has been set, courts have deemed one transaction, one shipment, or a handful of sold units inadequate usage. Token usage was deemed appropriate for a federal trademark application prior to 1989. However, even if the first product run or shipment was limited, the corporation must have the purpose to continue using the mark.

The Fort Howard Paper Company, which utilised a six-box shipment to support its federal trademark registration, was the major case supporting this token usage. Their trademark was registered successfully, and they followed up with more shipments after around two years. In other circumstances, token usage in commerce has been permitted in the context of an intent to continue use.

In most circumstances, transactions made with the goal of establishing a company, even on a small scale, qualify as proof of bona fide usage sufficient to support a trademark registration. Sham transactions, on the other hand, are not allowed use. The following are some instances of legitimate usage that were denied by the USPTO:

One container of salt sold to another corporate executive

A single package was despatched to a partner firm and was promptly returned.

A free modest cargo of juice to a shareholder firm

A single shipment of car components to the spouse of a company owner

Nominal, casual, or infrequent bona fide business transactions are permitted at the discretion of the USPTO. Some instances of failed proposals include:

In a four-year span, a single jar of cold cream was sold.

Monthly supply of acne medications to wholesalers with no indication of end consumers buying the product

In a seven-year span, there was just one shipment of china.

Perfume sales during a 20-year period yielded a profit of less than $100.

Only use the mark on shoes sold by a rival.

Software is used in commerce.

The introduction of a mobile app or other software product is often considered usage in commerce. Depending on the depth of the testing, beta testing may or may not be regarded adequate.