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Trademark Application FAQ: Use in Commerce or Intent to Use?

January 7, 2016 By Kelley Keller

Trademark Application FAQ: Use in Commerce or Intent to Use?

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.

About Kelley Keller

Kelley Keller, Esq. is an intellectual property (IP) attorney, speaker, and educator with two decades of experience in the IP field. She works with individuals and businesses in a wide variety of industries helping them transform their ideas, knowledge, and innovation into valuable business assets that drive profits. Kelley offers education to established businesses, startups, entrepreneurs, corporate executives, non-profits, government agencies, legal professionals, and students about starting and growing a business as well as about IP, social media law, and the importance of protecting valuable brand assets and creative work.

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What People are Saying about Kelley Keller

Lisa Frederiksen | Author, Speaker, Trainer, Consultant at BreakingTheCycles.com

Kelley works differently. After an initial phone conversation (I live in CA and she's in PA), she drafted a scope of work for both efforts and set a flat fee which included (and still includes) the back and forth conversations a client needs in order to get the best results. She is extremely knowledgeable and truly able to "hear" what I'm after and create meaningful legal documents and advice that have helped me immeasurably. I highly recommend Kelley Keller.
2016-04-23T10:27:42-04:00
Kelley works differently. After an initial phone conversation (I live in CA and she's in PA), she drafted a scope of work for both efforts and set a flat fee which included (and still includes) the back and forth conversations a client needs in order to get the best results. She is extremely knowledgeable and truly able to "hear" what I'm after and create meaningful legal documents and advice that have helped me immeasurably. I highly recommend Kelley Keller.
http://kelleykeller.com/testimonials/lisa-frederiksen/

Kelly Phillips Erb | Senior Editor at Forbes

Kelley was able to explain complicated legal issues in a manner that was easy to understand without being patronizing. She was also great at talking me down from ledges - it was easy to get worked up when opposing parties weren't being cooperative but Kelley advised me to trust in the process and she was right.

Kelley explained my costs and options, as well as the pros and cons of each. She also kept me informed about my matter, letting me know what I needed to do at the appropriate time. All in all, I felt very involved in the process without being overwhelmed. Kelley made a wildly stressful situation so much better. I would highly recommend her services.
2016-04-23T10:42:43-04:00
Kelley was able to explain complicated legal issues in a manner that was easy to understand without being patronizing. She was also great at talking me down from ledges - it was easy to get worked up when opposing parties weren't being cooperative but Kelley advised me to trust in the process and she was right. Kelley explained my costs and options, as well as the pros and cons of each. She also kept me informed about my matter, letting me know what I needed to do at the appropriate time. All in all, I felt very involved in the process without being overwhelmed. Kelley made a wildly stressful situation so much better. I would highly recommend her services.
http://kelleykeller.com/testimonials/kelly-phillips-erb-senior-editor-forbes/

Charlotte Avery | CEO at Being Charlotte Avery

Words cannot express how much I appreciate Kelley Keller. She has helped me and my business on so many levels. Whenever I have a question I always know that I can call her and she will give me the best advice/counsel. I know that my business is in good hands with Kelley.

Kelley, THANK YOU for EVERYTHING!!!
2016-04-23T10:46:03-04:00
Words cannot express how much I appreciate Kelley Keller. She has helped me and my business on so many levels. Whenever I have a question I always know that I can call her and she will give me the best advice/counsel. I know that my business is in good hands with Kelley. Kelley, THANK YOU for EVERYTHING!!!
http://kelleykeller.com/testimonials/charlotte-avery-ceo-charlotte-avery/

Ruth Koup | Founder of Suits to Careers, Inc., Dress for Success South Central PA & Tied to Success

Kelley Clements Keller, Esq has been a huge support to the launch of our new umbrella organization, Suits to Careers, Inc. and the branding and trademarking of our men's program, Tied to Success. We could not have navigated this transition without her support. Many thanks.
2016-04-23T10:49:27-04:00
Kelley Clements Keller, Esq has been a huge support to the launch of our new umbrella organization, Suits to Careers, Inc. and the branding and trademarking of our men's program, Tied to Success. We could not have navigated this transition without her support. Many thanks.
http://kelleykeller.com/testimonials/ruth-koup/

Matt Bloom | Founder & CEO of CRIMEWATCH Technologies, Inc.

Kelley is an exceptional IP attorney. She understands the legal nuances facing start-ups and is willing to work within those restrictions. Kelley is casual and easy to work with, but when it comes to legal action she is aggressive and takes charge. She has successfully helped us secure coexistence agreements and trademarks for our business. Here expertise has added exponential value to the technology we have built and I would highly recommend her to anyone seeking IP representation.
2016-04-23T10:53:29-04:00
Kelley is an exceptional IP attorney. She understands the legal nuances facing start-ups and is willing to work within those restrictions. Kelley is casual and easy to work with, but when it comes to legal action she is aggressive and takes charge. She has successfully helped us secure coexistence agreements and trademarks for our business. Here expertise has added exponential value to the technology we have built and I would highly recommend her to anyone seeking IP representation.
http://kelleykeller.com/testimonials/matt-bloom-founder-ceo-crimewatch-technologies-inc/

Zachary Ziegler | Brewmaster at Molly Pitcher Brewing Company

Kelley is not only extremely knowledgeable in the realm of intellectual property, but she made the whole process fun! It's not often you hear fun and legal work in the same sentence but Kelley's personality eased my worries while keeping me upbeat the whole time. She explained the entire process in language I could understand and kept me updated continuously. I would not hesitate to work with her again or refer her to my friends and family.
2016-04-23T10:54:48-04:00
Kelley is not only extremely knowledgeable in the realm of intellectual property, but she made the whole process fun! It's not often you hear fun and legal work in the same sentence but Kelley's personality eased my worries while keeping me upbeat the whole time. She explained the entire process in language I could understand and kept me updated continuously. I would not hesitate to work with her again or refer her to my friends and family.
http://kelleykeller.com/testimonials/zachary-ziegler-brewmaster-molly-pitcher-brewing-company/
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