In the United States, the Lanham Act primarily governs the protection and use of trademarks and service marks, along with touching upon the related topic of unfair competition. The Lanham Act is where the United States Patent and Trademark Office (USPTO) obtains its guidance from. Before allowing a trademark to gain federal protection, one thing that the Lanham Act requires is the mark’s use in commerce.

What is Use in Commerce?

Using a mark in commerce is the bona fide use of the mark in the ordinary course of trade. The term “bona fide” is included because the USPTO wants to make sure that you are genuinely using the mark as part of the related business as opposed to using it simply to try to reserve some federal protection. According to the Lanham Act, trademarks for goods are generally used in commerce when the marks are placed on the goods, their containers, or their related displays, such as tags or labels. The relevant company or person must also sell or transport the goods in commerce. For services, a person must display or use the marks within the point of sale or advertising of the related service.

Over the years, courts have provided examples on what qualifies as using a mark in commerce. However, no two situations or circumstances are alike. Therefore, just because something qualified as use in commerce in one case does not necessarily mean that the same would occur in yours or your company’s situation. Just know that the bottom line is that the courts want to know whether the way that you or your company are using the mark is something that Congress can regulate through its commerce powers. If so, then your mark is one step closer to federal protection.

What if I’m Planning to Use it in Commerce?

In practical terms, there are two ways in which you can apply for federal trademark protection—under Section 1(a) or Section 1(b) of the Lanham Act. Section 1(a) is essentially what we have discussed so far. You use the mark in commerce and then apply for the trademark protection, along with what is called a “specimen” of the mark and a verified statement saying that the mark is used in commerce.

However, there are instances where you may want protection for your mark, but you simply have not had the opportunity to use it in commerce yet. Perhaps your company is still in the R&D phase of the product or perhaps you are waiting on a few more governmental licenses or permits before you can open up your store. Whatever the reason, it happens. In that instance, you would want your attorney to file what is called an Intent to Use application, which is based upon Section 1(b) of the Lanham Act. This application generally includes a verified statement of your genuine intent to use the mark. If the USPTO allows the application process to move forward, you will have to follow up with a Statement of Use usually within 6 month after the USPTO issues you what is called a Notice of Allowance. This Statement of Use shows proof to the USPTO that you ultimately used the mark in commerce. While the USPTO can start the registration process even though the mark has not been used in commerce yet, it will not register the mark until it does see proof that it has been used in commerce.

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Given this brief overview, we at least know that using a mark in commerce is an important part of obtaining federal mark registration. However, what exactly qualifies as using it in commerce differs depending on the relevant product or service. Then even if the mark is used or will be used in commerce, proving it to the USPTO requires proper presentation through Sections 1(a) or 1(b) applications.

Since proving use in commerce is an important part of the trademark application process, you will want to make sure that you do not waste any time going down incorrect paths or making incorrect assumptions on what qualifies as such use. Therefore, you want to make sure to consult with a licensed and experienced trademark attorney in your area early on in the application process of your trademark.