In order to qualify to register your client’s trademark at the USPTO, it must be using the trademark in commerce. But, what exactly does “use in commerce” for a trademark mean?
Trademark Use in Commerce
Trademark “use in commerce” is a legal term of art and refers to any use generally that crosses state lines. In short, it is any commerce that is regulated by Congress. Remember the commerce clause from first year constitutional law? That’s the clause of the constitution that gives the USPTO its powers. If your client is doing business in more than one state or between the United States and a foreign country, then it likely has met the requirements for “use in commerce.” Merely having an internet presence may not be enough to meet the requirements of “use in commerce” unless your client is also selling to clients in more than one state. Often these factual issues will come out in litigation, so you want to be sure that you are setting your client up for success, both in terms of securing a trademark registration and one that can be enforced both at the Trademark Trial and Appeal Board and in the Federal Courts.
Use in Commerce and Date of First Use
There is a close relationship between use in commerce and the date of first use, especially when filing a trademark application. Make sure you understand how to properly counsel your client with respect to these two critically important concepts. For instance, a regional client may have started selling in their local area some months before they have use in commerce and as a result the date of first use for purposes of their Federal Trademark Application may differ from the date they first started using the mark and selling their product locally.
Want to Learn More?
If you would like to learn more about how to file trademark applications including the basics of counseling clients and being able to confidently counsel clients throughout the entire application process and grow your trademark practice, then consider joining our Trademarkabilities® Masterclass. You can learn more about our courses here to enroll or reach out to us for more information. Or, you can join our mailing list, and download our free e-guide “5 Tips for Trademark Success at the USPTO.”
Stacey C. Kalamaras is the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. Stacey started Trademarkabilities to share her passion teaching the law with the next generation of lawyers and help them become practice ready lawyers. Contact us at: firstname.lastname@example.org.
Stacey is also a seasoned trademark attorney and currently works in-house as Senior Counsel for a multi-national candy company. She previously owned her own solo trademark practice, which she scaled and sold. She has been recognized by her peers for her outstanding knowledge and service in intellectual property law.