When Do I Have “Use In Commerce” of My Trademark?

When Do I Have “Use In Commerce” of My Trademark?

In order to register your trademark, you will have to show use of your mark in commerce.  Your filing basis will determine when you have to show use.  If you file on an In Use basis, you will show your use in commerce of the mark as part of the application.  For an Intent to Use application, you will make that showing by filing the Statement of Use.  Clients often ask me about whether they have use in commerce.  This is an important question, because claiming use in commerce before you have it can lead to some major problems later on.

The question of whether a mark is being used sounds pretty straightforward.  But sometimes it can really be unclear.  The Lanham Act (which governs trademark law) defines use in commerce as: “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”  So even in the definition, it’s saying that you can’t make a sale under a name just to get rights to that name.  Although the question of use in commerce can be pretty fact-specific, there are a few scenarios you’ll want to avoid:

  1. Giving or selling a few products to family/friends;
  2. Large gaps in sales following the first use of your trademark;
  3. Not promoting, advertising, or marketing your products/services; and
  4. Not making your products/services available for consumers.

Correctly assessing whether you have use in commerce of your trademark is critical.  If you file your trademark application on an In Use basis without legitimate use in commerce, your application is void as filed.  It may not register, and if it does it will always be subject to cancellation.  For Intent to Use applications, filing a Statement of Use before you have commercial use can also open you up to cancellation.  In the latter scenario, it makes more sense to file an Extension of Time until you have the proper use.

In order to show use in commerce, you will need to provide a proper specimen.  This will be much easier once you are using your trademark in commerce.  Again, this can be a very fact-specific question.  If you are not sure whether your use constitutes a “use in commerce,” you should be speaking with an attorney.  Otherwise, you may waste time and money in the form of filing fees.  Even worse, you may have your registration invalidated years from now once your trademark is very valuable.  Don’t make that mistake.

Are You Unsure Whether You Have Use In Commerce of Your Trademark?

If you are interested in speaking with an experienced attorney that can help you determine whether your use of a trademark is sufficient, please feel free to call me at (314) 479-3668, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today.  I look forward to speaking with you.