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What is the Use in Commerce Requirement?

May 13, 2016

     As part of a federal trademark application, the applicant typically will need to identify two dates:  (1) "Date of First Use of Mark Anywhere" and (2) "Date of First Use of the Mark in Commerce".

 

The responses seem like they should be simple.  However, if you are unaware of what these questions are asking actually, then your responses may void your application or invalidate your issued registration. Aycock Engineering, Inc. v. Airflite, Inc., 560 F. 3d 1350, 1361-62(Fed. Cir. 2009).  These questions are not asking about the first time that the trademark was used publicly.

     The "Commerce" part of the second question means commerce which may be regulated by Congress. 15 USC 1127.  Thus, commerce between the states, between the US and its territories, between the US and a foreign country, or commerce in one state that affects a type of commerce that Congress can regulate.  An example of the last type of commerce would be a restaurant in one state that serves interstate travelers.  TMEP 901.03.

    The Lanham Act, 15 USC 1127 (emphasis added), additionally defines "use in commerce" to mean:

the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce

(1) on goods when—

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

 

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

 

Thus, as applied to goods, the "Date of First Use of the Mark in Commerce" is asking actually for the date that the mark (a) was used in a bona fide manner (b) on the goods or associated paraphernalia and (c) the goods are sold or transported between the states, between the US and its territories, between the US and a foreign country, or commerce in one state that affects a type of commerce that Congress can regulate.

    Because of the importance of the "Date of First Use of the Mark in Commerce", all applicants should keep records of what they are relying on to prove the mark's use.

 

 

updated on 6/8/16.

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