When you apply for federal trademark registration, you’ll be required within the trademark application to identify whether the mark has already been used in commerce or not. This is an important question that affects how long it takes to get a trademark registration and the steps you have to take along the way, but it’s also a question that causes a lot of confusion.
For many trademark applicants, determining whether or not their marks qualify as having been used in commerce already based on how trademark laws are written makes little sense. In fact, it’s something I have to explain in detail to many of my clients.
If you’re struggling with understanding use in commerce vs. intent to use trademark applications, here are some simple explanations that should clear up your confusion.
Use in Commerce vs. Intent to Use
For federal trademark applications, there are two key things that determine whether your mark is considered to have been used in commerce or you have the intention to use it in commerce in the future:
1. Interstate Commerce
You can only federally trademark something through the U.S. Patent and Trademark Office (USPTO) if it has been used in interstate commerce. That means the goods or services bearing the mark must have been available for sale or distribution between two U.S. states or territories or between the U.S. and a foreign country.
The reason for this is simple. For federal trademark registration, the mark must have been used in a type of commerce that is regulated by the U.S. Congress. Commerce within a state doesn’t qualify because it is not regulated by the U.S. Congress.
2. Visibility
A mark is only considered to be used in commerce for federal trademark purposes if it is visible on some form of goods such as packaging, labels, tags, containers, displays, and so on.
If the mark is used for services rather than goods, then the mark must have been used in some type of advertising, sales, or marketing materials. This could be a print ad, a brochure, a direct mail piece, a web page printout, and so on.
You need to provide a specimen of use with when you file a use in commerce trademark application (the examples in the preceding paragraphs are all acceptable specimens of use). Keep in mind, the specimen of use must show the mark exactly as it appears in the application in use on the actual goods or in connection with the actual services listed in the application. A specimen that shows the mark in a decorative manner such as your logo on a T-shirt, pen, or bag would not be acceptable.
For an intent to use application, the specimen of use doesn’t have to be submitted with the initial application. You get some time to actually use it in commerce before you have to submit your specimen of use. See Step 8 of the Trademark Timeline for details.
The First Date the Mark was Used in Commerce
For a use in commerce trademark application, another confusing point on the application is identifying when the mark was first used anywhere, whether in commerce or not.
While the mark must have been used in interstate commerce to be federally trademarked (and qualify to be filed as a use in commerce application), the date to enter in the trademark application as first use is the date the mark was first used anywhere—even if that use was local, meaning it was used in your local community and only within one state.
The Takeaway
Your mark should be filed as a use in commerce trademark application if it has been used in interstate commerce and you have an acceptable, visible specimen of use. If you don’t have those two things, you need to file an intent to use trademark application and submit an acceptable specimen of use at a later date.
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