Skip to Content

What Exactly Is Use in Commerce?

on Monday, 23 July 2018 in Technology & Intellectual Property Update: Arianna C. Goldstein, Editor

Many federal trademark applications are filed on an intent-to-use basis, which means that the applicant has not yet begun to use the mark in connection with its business activities to brand, market, and sell its products. However, in order to complete the trademark registration process, it is necessary to demonstrate to the Trademark Office that the mark is being “used in commerce.” But what type of use is sufficient to demonstrate to the Trademark Office that a mark is being used in commerce?

U.S. law defines “commerce” for purposes of federal trademark requirements broadly as “all commerce which may lawfully be regulated by Congress.” Demonstrating that a mark is “used in commerce” requires that the mark be used in the ordinary course of trade and not used merely to reserve a trademark right in the mark. So, in order to meet the “use in commerce” requirement of the Trademark Office, a mark must (1) be used in connection with commerce that may be regulated by Congress, and (2) be in general use by the business.

Determining whether the use of a mark is in connection with “commerce” that is lawfully regulated by Congress requires more unpacking. Typically, commerce lawfully regulated by Congress is thought of as interstate commerce – or the marketing or sale of goods across state lines. However, it has long been recognized that the sale or advertising of a mark solely within the boundaries of single state may also constitute commerce that is regulated by Congress. This principle has been expanded upon to include several variations of “use” within a single state that may nevertheless qualify as commerce lawfully regulated by Congress. An example of the outward bounds of such intrastate use is found in the case of Christian Faith Fellowship Church. This case involved the in-state sale of two hats to out-of-state customers. The Court of Appeals for the Federal Circuit held that these sales sufficiently constituted commerce that may be regulated by Congress by reasoning that the in-state sales, when taken in the aggregate, would affect interstate commerce.

This standard, as applied in the Christian Faith Fellowship Church case, has been adopted by the Trademark Office in its manual for examining procedures, and is directly applicable when considering whether a mark has been used in commerce. The practical implication is that demonstrating “use in commerce” may be easier may than it first appears. Businesses established and operating in a single state should thus pay particular attention to any sales or directed advertising to out-of-state consumers, as such activities may be important for establishing use of a businesses’ mark in commerce.

Next month we will examine the nature and extent of use that is required to demonstrate sufficiency of use for registration purposes.

AriAnna C. Goldstein

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