Commercial Use Requirements for Filing a Trademark

An important requirement when filing your federal trademark is showing that you are “commercial using” the mark you want to register. The U.S. Patent and Trademark Office (USPTO) requires proof of “use” so that people do not attempt to register marks to just “reserve” them.

1.  How to prove “use” of a trademark.

If you are filing a trademark registration for a product, you should display your trademark on the product itself (or on the tags or labels attached to the product), the container holding the product or on the displays of the product.

To provide you with some examples, consider the Apple® trademark.  The Apple® trademark is displayed on Apple® computers, iPods and iPhones.  The Apple® trademark is also displayed on Apple® products’ packaging (for example, the box the Apple® computer is sold in) and on displays inside the Apple® store.

It is not enough, however, to prove that you are using the trademark on your product. You must also demonstrate to the USPTO that the goods with your trademark on them are being sold or transported “in commerce,” which basically means you offer your products for sale.

To provide you with an example, let’s say you have designed and manufactured a new type of sneakers called NIBOK.  You wish to apply for a U.S. trademark registration for your NIBOK trademark.  You have placed the NIBOK trademark on the side of the shoes and also on the box they come in.  If you have already begun to sell your NIBOK shoes (for example over the internet on your Web site www.nibok.com), then you are both using the mark and selling your goods “in commerce.”  However, if you have not yet begun to sell your shoes, you are not selling your goods “in commerce” just yet.

2.  How to prove “use” of a servicemark.

If you are trying to register a trademark for a service, you must display the servicemark in the sales and advertising of the service.

For an example of how to use a service mark, think about FedEx®.  FedEx®, a postal delivery service, displays its service mark in advertisements on television and in magazines.  FedEx® also displays its service mark on banners and other paper displays at its FedEx® stores. In addition, FedEx places its logo on the invoices and shipping labels one uses to ship via FedEx.

Similar to the requirements for a trademark, it is not enough to prove that you are using the service mark in conjunction with your services. You must also demonstrate to the USPTO that your services are being sold or transported “in commerce,” which basically means you offer your services for sale.

3. Intent to Use Applications

To revisit our NIBOK example, suppose you have just come up with the NIBOK name for your shoe line, but you have not had the chance to manufacture or sell your shoes yet.  Even though you have not begun to use your mark yet, you may still want to register your mark to make sure nobody else uses it on shoes before you do.  In this case, you may file what is called an “intent to use” application with the United States Patent and Trademark Office (USPTO), based on your intention to use the NIBOK trademark when you sell your shoes.

On an intent to use application, unlike a regular application, you do not have to actually use your NIBOK trademark before you file your application.  However, you will need to provide proof to the USPTO later on that you are actually using your NIBOK mark.  So, for example, you may file an intent to use application for NIBOK, and then (approximately) 8-12 months later, once your shoes are manufactured and being sold on nibok.com, you will need to provide evidence of your use to the USPTO.

Josh Gerben is the founder and principal of Gerben Law Firm, PLLC, offering affordable legal services to both small and large businesses. TrademarkArmor.com is a service of his law firm, providing professional assistance with the trademark registration process. Visit Gerbernlaw.com for more information.

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