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.
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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