Skip to Content

What Exactly Is Use In Commerce? Part 2

on Monday, 27 August 2018 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

Last month (July 2018),we discussed what type of use constitutes “use in commerce” in order for a trademark to be registrable with the Trademark Office. In addition to use in connection with a type of commerce capable of being regulated by Congress, the trademark must be in general use by the applicant prior to registration. Specifically, the trademark must be in “bona fide use in the ordinary course of trade.” The Trademark Office will not consider a token use, solely to reserve rights in the trademark, a bona fide use.

Typically, use of a new trademark by a business is rolled out gradually; so when does use of the mark rise to the level of bona fide use in the ordinary course of business? The Trademark Office focuses on three factors in assessing whether there is a bona fide use: (1) The amount of use; (2) The nature or quality of the transaction; and (3) What is typical use within a particular industry. See TMEP 901.02. In Automedx, the Trademark Trial and Appeal Board held that the applicant’s use of the SAVE mark in connection with the sale of prototype models of its portable ventilator to the military was a bona fide use. In making this holding the Board focused on the fact that the sale of the prototypes was for the legitimate business purpose of evaluation by the customer in determining whether to buy additional models in the future. See Automedx Inc. v. Artivent Corp., 95 U.S.P.Q.2d 1976 (T.T.A.B. Aug. 17, 2010).

In contrast, the Board found in Plant Food Systems that applicant’s use of the RENEW trademark in connection with one sale of fertilizer over four years was not a bona fide use. In making this determination the Board considered whether the limited use of the trademark was common in connection with the applicant’s industry and whether the shipment was for commercial purposes. The Board found that the shipment was noncommercial in nature, as the shipment was to a distributor for evaluation, but the applicant could not demonstrate any evaluation analysis after such shipment. Further, there was no industry-specific reason to explain only one use of the mark in four years. For this reason, the Board found no bona fide use in the ordinary course of trade. Plant Food Systems, Inc. v. Earthrenew, Inc., No. 91194313, 2012 WL 9172068 (Jan. 6, 2012).

When evaluating whether use of your trademark is enough to show bona fide use, it is important to consider the intent behind your business’s use of the mark. Particularly, if the use of your mark is primarily for obtaining a registration, it likely will not meet the factors for a bona fide use. However, limited use of your trademark for commercial purposes, such as evaluating a market or having consumers evaluate the underlying good or services, is likely a bona fide use. Overall, focusing on the commercial use of your trademark and marketing and/or selling to consumers out-of-state is key for demonstrating “use in commerce” for your federal trademark application.

AriAnna C. Goldstein 

1700 Farnam Street | Suite 1500 | Omaha, NE 68102 | 402.344.0500