Determining Your Mark's First Use In Interstate Commerce
John Wilson • May 10, 2020
Trademark Use in Interstate Commerce, & the Benefits of State Registration.
To register a U.S. federal trademark, a trademark owner must first use a mark in interstate commerce on its goods or services. Section 45 of the Trademark Act defines "use in commerce" as a bonafide use of a trademark in the ordinary course of trade. Examples of this “use in commerce” would include the prominent display of a mark on goods, containers, displays, packaging, tags and labels, and on other documents or materials associated with the good or services. These public displays of use are necessary for you to receive trademark protection. In fact, when you apply for trademark protection, the U.S. trademark office will ask you for two dates:
- the date your mark was first used anywhere; and
- the date the mark was first used in commerce.
Your first use date in commerce cannot be earlier than your first use date anywhere. Importantly, if your sales are too sporadic, casual, or nominal, such sales may not qualify as sales “in the ordinary course of trade” for the purposes of determining a bonafide commercial transaction.
Does Selling In One State Count As Use In Commerce?
For the purposes of federal registration, the use of the trademark must be in more than one U.S. state or territory. Federal registration cannot be achieved by intrastate (inside one state) commerce only. A sale only within one state is considered a “use in intrastate commerce” and for that single state use you may seek state specific registration, if available, but you do not have a federal “use in commerce”. A sale or an offer to sell a good or service across state or U.S. territorial lines (more than one state) is necessary. Given the U.S. Congress must regulate the commerce anticipated under Section 45 of the Lanham Act, this necessarily means that your first “use in commerce” must be lawful use within more than one state, more than one U.S. territory, or between a foreign country and the U.S. Generally, the first-time goods are sold and transported across state lines can be used as the date of your first use in interstate commerce. Knowing that federal trademark registration cannot be provided by intrastate (inside one state) commerce alone, some business must seek state specific registration. Fore more information on trademark registration, see our Trademark Registration
web page.
How Do I Show Use In Commerce for My Product And Services?
An acceptable trademark specimen for a good can be shown by marks applied to the goods or the containers for those goods, and even by shipping or mailing labels. Any product packaging that bears the trademark but does not fully display a picture of the goods or allow customers to see the goods, may still be an acceptable specimen in certain circumstances. Importantly, mark’s pressed directly onto a product or onto containers are good evidence of trademark use in the manufacturing process. As for services, acceptable specimens would normally consist of advertisements, displays, or signage. A service mark specimen must show use of the mark in the sale or advertising of those services within interstate commerce, and a specimen that does not show such use would be rejected by the trademark office. The mark and the service must have a direct association such that it creates an impression in the mind of the consumer linking the two.
Can My Pre-Sale Activity Count As Use In Commence?
At times, pre-sales activities such as beta testing may be sufficient to establish a trademark's "use in commerce"; however, that will depend on the actual use of the pre-sale activities. For example, a GoFundMe campaign related to your trademark would likely not be considered pre-sales activity as it does not comprise use in interstate commerce in association with any goods or services. Such a campaign may show your intent to use a mark, but it is not actual use itself. Further, seeking trademark rights without actual sales would depend on whether the mark is used "in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark...." Blue Bell, 508 F.2d at 1266, citing New England Duplicating Co. v. Mendes, 190 F.2d 415, 418 (1st Cir.1951).
Can I File A Mark That Has Not Yet Been Used In Commerce?
If your mark has not yet been used in interstate commerce, then you should promptly file an “intent to use” (ITU) trademark application. An ITU application is for those marks which have not yet been used, but for which you have a bonafide intent to use in interstate commerce. This allows you to secure an early priority date for your mark while you work over the next thirty (36) months to get your trademark "in use" for registration. ITU applications may be renewed/extended every six (6) months up to a maximum of five (5) renewals. Failure to file with the trademark office a “notice of use” for your ITU mark within such thirty-six (36) month time frame will result in an abandonment of your trademark application. An abandoned trademark must be refiled.
What If I Only Use My Mark In One State?
If you cannot qualify for federal trademark registration and use, or simply will never sell in interstate commerce, the Texas trademark statute will allow you to file a state trademark for use within Texas (i.e. The Texas Business and Commerce Code § 16.02 allows you to file trademarks that are actively being used in Texas). Use of your mark in Texas can give you a registered state trademark which may provide some limited geographic protection; however, such state trademarks are considered junior to any earlier filed and registered U.S. federal trademark. Texas does not allow intent to use applications or the registration of marks which are not already in use.
Does A Domain Name Qualify As A Trademark?
A domain name by itself is not a trademark, and the mere act of registering a domain name is not considered a trademark use. However, a mark composed of a domain name is able to be registered as a trademark or service mark provided it also functions as a source identifier for a good or service. A domain name that is merely informational does not act a trademark, and the linking to or accessing of a website does not count as trademark use.
Fore more information on trademarks, see our Trademark
web page.
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Dallas Family Law & Divorce Attorneys Deciding to divorce is a challenging and significant life choice. Once you've made that decision, there are many paths to consider, and Wilson Whitaker Rynell is here to help you navigate the best way forward. What distinguishes us from other Dallas family law firms is our exceptionally skilled team of family law practitioners and our commitment to delivering outstanding client-centered service. Whether through mediation or litigation, our family law attorneys in Dallas bring a depth and breadth of knowledge gained through years of successful practice. We also have board certified divorce lawyers so you can count on the highest standards of integrity, expertise, and legal proficiency from the divorce lawyers at Wilson Whitaker Rynell. Whether you're in Dallas, Plano, Frisco, Allen or any other Dallas neighborhood, you can trust our local family law firm to provide you with the support and guidance of a highly experienced team of family lawyers. Family Law Practice Areas Our dedicated team is focused on providing personalized and effective legal solutions tailored to each client's unique circumstances. We understand that family law matters can be emotionally challenging, and we strive to offer compassionate support while staunchly defending our clients' rights and best interests. With Wilson Whitaker Rynell, you can trust that you'll receive top-tier legal representation from a team that genuinely prioritizes your well-being. We specialize in a wide range of family law and divorce matters, ensuring comprehensive legal support for our clients. Our experience includes, but is not limited to, the following areas:
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Interview of a Child in Chambers by a Texas Court Divorces can be messy; even more so when children are involved. One pivotal question that is often asked is who will receive primary custody. The prospect of children speaking to a judge during a divorce case to help determine custody can be a controversial topic. On one hand, it aims to understand and prioritize the child's preferences and best interests. On the other hand, exposing children to legal proceedings can be emotionally taxing and stressful . When Can the Judge Talk to Children? During a nonjury trial or hearing, the court is required to privately interview any child 12 years or older, while interviewing a child under 12 is at the judge's discretion. This private interview helps convey the child's wishes regarding who should have primary custody. The judge can also conduct the interview independently or on the request of a party, amicus attorney, or attorney ad litem. While speaking to the child can help determine issues of possession, access, and parent-child relationships, it does not restrict the court’s authority to decide what’s best for them. However, in cases where a jury trial is underway, the judge is prohibited from privately interviewing the child on matters subject to a jury verdict such as which parent is granted conservatorship/primary custody. During the conversations, attorneys representing the parents, the amicus attorney, the guardian ad litem, or the child's attorney ad litem may be present. For children aged 12 and older, the court is required to record these interviews to ensure a thorough and accurate record is available as part of the overall case documentation. Inside the Judge's Playbook: What Gets Asked? The judge may ask open-ended questions about living arrangements, the child's relationship with each parent, and other aspects relevant to their well-being. Additionally, an interviewer’s nonverbal communication may not contribute to the making of a particular statement. James v. Texas DHS, 836 S.W.2d 236, 239-241, (Tex.App.—Texarkana 1992, no writ.). However, the child's testimony is just one piece of the puzzle, weighed alongside other factors such as parental behavior, home stability, and each parent's willingness to cultivate the child's relationship with the other parent. Importantly, if the judge during the interview has reasonable cause to believe that a child’s physical or mental health or welfare has been adversely affected by abuse or neglect by any person , the the judge is obligated to shall immediately make a report. Tex. Fam. Code §261.101(a).
What is a Franchise Agreement? Businesses form franchise agreements when they want to share their business ideas and ventures with other entrepreneurs looking to be independent business operators themselves. The franchise agreement is a legal contract that establishes a franchisor-franchisee relationship to expand the franchisor's entrepreneurial ideas and values. The franchisor grants the franchisee the legal right to set up and operate a franchised business consistent with the terms of the franchise agreement. Under this agreement, the franchisee gains the license to use the franchisor’s trademarks, trade dress, business systems, operational manuals, and supply sources for offering and selling the franchisor's specified products and/or services. The franchise agreement is required to be legally included as an exhibit in the franchisor’s Franchise Disclosure Document, which must be presented to potential franchisees before any franchise offerings or sales are made. The federal trade commission publishes A Consumer's Guide to Buying a Franchise which is helpful for perspective purchasers' of franchises.
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